Reverse Domain Name Hijacking Decision Under the UDRP: What Was The Attorney Thinking?

A recent reverse domain hijacking decision in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM is interesting to any lawyer who practices domain dispute law. The law firm bringing the Complaint Lowenstein Sandler PC advertises as a large law firm specializing in domain name disputes as evidenced by a search of their web site for the words "domain name." Considering that the domain name was registered 5 years before Complainant's trademark application was even filed and 3 years before claimed first use of the trademark, and that it contains two generic words, it is hard to imagine whether the lawyers were thinking beyond the billable hour when they filed this one. 

WIPO Domain Name Decision: D2008-0641

In addition, the Complainant’s case was weak in other respects. The Complainant provided no strong evidence of its trademark rights. The Complainant has no registered trademark. The Complainant provided evidence of having only a pending application for a registered mark. Neither did the Complainant provide strong evidence of having common law, or unregistered, trademark rights. The Complainant’s evidence in this respect comprised of three pages from its own website, and a small number of articles with incidental references to it, or containing (among others) short quotes of the “CEO of ad network Collective Media”. Those articles were dated between January and March 2008. The evidence from its own website appears to have been obtained in April 2008. The Complainant provided no evidence to support its claim of having unregistered trademark rights in 2005, let alone in 2002 when the disputed domain name was registered.

The Panel therefore finds that the Complainant should have appreciated that its Complaint could not succeed and, as such, was brought in bad faith for the purpose of paragraph 15(e) of the Rules.

Congratulations to Ari Goldberger who represented the Respondent.
Technorati Tags: domain name, trademark, bad faith, cybersquatting

Failure to Respond To Trademark Threat Letters & Use of Privacy Services Can Support a Finding Of Bad Faith

There are many risks to domain investors under the UDRP.   The opportunity to capitalize on strong generic or descriptive domain names is in many ways dependent on a solid understanding of UDRP decisions and avoiding behavior which would increase a risk of transfer. As investors purchase domains at higher prices, the ability to protect those domains from transfer later on becomes more important.  A serious domainer needs to understand that their own behavior can provide ammunition to a complainant seeking a domain transfer order of a high value domainvunder the UDRP.  The WIPO panelists in creditkeeper.com ordered a transfer of a domain purchased by a domain investor for $48,000 based, in large part, on avoidable behavior and poor decision making by the domain investor.