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.