I want to point out two UDRP filings that were based on the same primary domain name but had different results. The first case involves a .CO domain name that matches an established .com website, and the second case involves several .com typos of the same .com domain name as the first case.
The former case involves a domain name that was recently registered, while the later involves domain names that were acquired prior to the complainant’s acquisition. As you can see in the arguments below, the date of registration/acquisition was important in the panels’ findings.
A few weeks ago, a WIPO UDRP decision awarded PokerStrategy.CO to the owner of PokerStrategy.com. The UDRP was defended by Raj Abhyanker, and this case was decided by a single panelist. There were a few comments I found interesting in the discussion:
“Previous UDRP panels have found that where a domain name is purely descriptive, even where it is part of a registered trademark, then a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant.”
“In this case the term “poker strategy” is comprised of two common English words and the combined term is purely descriptive and based on the evidence before the Panel is commonly used in the industry. Without more this would be enough to find that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name and to deny the Complaint. However as discussed below, there are supervening circumstances in this case which lead the Panel to infer, on the balance of probabilities, that the Respondent has in this case sought to target the Complainant and that therefore the Respondent has not acted in good faith.”
“Based on the Respondent’s own acknowledgement of the success of the Complainant’s website at “www.pokerstrategy.com” and that the site had been in operation for a number of years prior to the Respondent’s registration of the Disputed Domain Name, the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance, at least amongst the Internet based poker playing community.”
The second UDRP filing involves a number of domain names that would appear to be typos of PokerStrategy.com. The owner of PokerStrategy.com filed a UDRP for: pokersrategy.com, pokerstategy.com, pokerstratgy.com, pokerstrtegy.com, and pokrstrategy.com. This UDRP was defended by John Berryhill, and there were three panelists who agreed on the findings.
There was some interesting discussion in this decision as well, and it seems that the date of the domain registration was critically important to this particular decision. Here are some findings and discussion:
“It may well be that in non-English speaking jurisdictions the relevant authorities were unaware that the term “Poker Strategy” was an unregistrable descriptive term referring, flatly, to poker strategy, but the United States Trademark Office had no such language difficulty.”
“UDRP Panels have repeatedly found that the use of common words and phrases utilized as domain names to advertise relevant subject matter is legitimate.”
“Here, the Complainant has taken the unusual approach of simply “wishing the facts away” by stating that it “assumes that Respondent has acquired the disputed domains well after the Complainant’s trademarks have been applied for.” This statement is false and is readily and demonstrably false, and was explained to the Complainant’s agents prior to this dispute, upon their attempt to acquire the disputed domain names on behalf of the Complainant. A printout of the WHOIS data for as of the stated “Cache Date” of November 6, 2005 clearly demonstrates that the Respondent had been the identified registrant thereof well prior to the Complainant’s later purchase of the domain name.”
Congratulations are in order for John Berryhill, who was also able to get a reverse domain name hijacking decision since the complainant gave statements that:
“were clearly designed to convey the impression that the Complainant itself had been using for a website from 2002, before registration of the disputed domain names. Whereas the Complainant could hardly have been unaware of the fact that it had only acquired in 2006.“
One thing I learned from the first decision is that if you own .CO domain names, you need to use them if the .com is already established. Descriptive domain names are generally protected when it comes to UDRP, but if a panel thinks you registered a name to capitalize on an established website, you had better be using the domain name as it should be used based on its descriptive nature.
Then what about PokerStrategy.co.uk? Isn’t that describe pokerstrategy.com?
Very nice article.
We have said all along that the .co position in any UDRP filed by the .COM Channel would win hands down. The .co introduction will make a lot of money for attorneys, and crush the Domainer flippers.
Meanwhile someone is hood winking a lot of people for a lot of money. We saw this coming and advised our clients to steer clear.
So far the second coming of .COM has turned into an apocolypse for those who swallowed the Kool-Aid.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
It’s not only for .CO. Typically, the more a website is popular, the more likely its owner goes after people supposedly capitalizing on it and wins the domains. Think of Facebook. 2-3 years ago would you have imagined that they would go after people owning some of the most generic (.com) domains containing the words ‘face’ and ‘book’?
Other than your own speculation, what do you based this on? .CO has been out for almost a year, has likely close to a million registrations, and only a handful of UDRPs filings that I’ve seen. I have yet to hear about a lawsuit either. Your “sky is falling” analysis is unsubstantiated as of yet and has not materialized.
I’d also like to add that if .CO domains go mainstream, building an independent identity among the general public, it won’t be that obvious that someone owning a .com and filing a complain for the .CO counterpart, will win it.
We might see an interesting but painfull twist to .co’s story in the future in regards to the date of registration/acquisition being used in WIPO/UDRP.
1) A company registers (thenamehere).CO for a few bucks and sets up a business then applies/recieves a Trade Mark.
2) Some time later (months/years) the same (thenamehere).COM EXPIRES and goes to the drop auctions, possibly selling to a domainer for thousands.
3) The .co owner then files UDRP against the NEW owner/domainer of the .COM due to “Confusingly Similar” to the .CO
Its bound to happen sooner or later but will it become a regular occurance ? 😉
Recent UDRP findings have looked into whether the renewal of a domain would constitute a period where a domain owner should evaluate their rights of ownership.
1st some of the language you quoted in the .COM case was actually JB’s argument and not part of the panel findings.
2nd, that said, IMO it all boils down to timing:
1. The Complainant here did have a trademark – don’t get me going on that issue as there are far too many TM applications that don’t pass the smell test that are approved either directly or based on a conjured up 2(d) application. Just take a look at the BestPrintingonline cases where a tm was registered under 2(d) for….(drumroll)… providing online printing. The evidence submitted in support of the 2(d) application was amazing – 2 short article in the same local Montana newspaper (the 1st about the complainant’s business and the 2nd about an independent consultant with the only reference to complainant being a quotation from the owner that the consultant was competent).
2. The .COMs predated the TM registration (and in fact any use by complainant) by many years.
3. The .CO domain was by comparison registered only after complainant used his “mark” and obtained TM registration.
4. The use of the .CO domain was not to explain “poker strategy” but appears to have been used for general gambling and specifically poker. This coupled with the fact that (a) the .CO came 2nd and (b) the respondent apparently admitted knowing about the complainant’s use, was sufficient to spell death.
5. I have little doubt that the .CO respondent would win in formal litigation but largely, if not entirely, after challenging the underlying TM.
Timing of the registration is everything. Whenever ownership changes, the bad faith clock is reset to the date of sale. Perhaps domainers should use a form of privacy that exists independent of the registrar and which does not change in connection with a sale. Without a change in WHOIS information, the complainant would be actually forced to provide evidence as to intent without regard to an automatic reset benefit. In such cases, the HISTORICAL use of the domain could (as it should) become more relevant vis-a-vis the asserted trademark. In other words, the argument becomes:
(a) The domain was first registered in 2001,
(b) The domain has always been used in PPC in connection with “X”;
(c) Complainant registered its TM in 200X;
(d) Complainant is presumed to have performed a TM search which would have shown the existence of this long registered domain.
(e) How can I as a respondent now be accused of targeting the complainant when I am using the pre-tm domain name in the same manner in which it has historically been used?”
Of course a wide-spread use of this would trigger a change in the rules but it would IMO act to re-balance the inquiry to where it should be.
It is in the context of timing that .CO domains (and any future tld domain) show their weakness in connection with a legal challenge. The older the domain the less likely it will be subject to challenge unless and until (of course) it is sold to a new buyer at a time when there exists either (a) a registered tm or (b) the grounds for asserting a common law tm. I think this is the point that Jeff was perhaps trying to make.
Thanks for your analysis and input on this.
I very much agree with this: “It is in the context of timing that .CO domains (and any future tld domain) show their weakness in connection with a legal challenge.”