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UDRP - Domain Name Dispute DecisionsCategory.
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Marc Randazza (Complainant) of The Randazza Legal Group wins UDRP action against Cybersquatter Crystal Cox (Respondnent) for the bad faith registration and use of domain names incorporating the Complainant’s personal name.
Further, the Respondent, in registering multiple domain names which each incorporated the Complainant’s personal name or surname – all of which are identical to corresponding ones of the Complainant’s RANDAZZA Marks, certainly denied the Complainant the right to reflect any of those marks in a domain name and exhibited a pattern of conduct in doing so.
Lastly, the Respondent’s websites, to which the disputed domain names resolved, contained pay-per-click (click-through) links to third-party websites, including that of a competitor of the Complainant. Obviously, in doing so, the Respondent relied on the confusion she caused to Internet users who thought they were reaching the Complainant’s website but in actuality were diverted to one of the Respondent’s websites instead for her own pecuniary benefit in subsequently collecting click-through revenue as a result of some of those users interacting with those sites – revenue she would not have gained but for the diversion, and denying the Complainant legal business and his resulting revenue which he and his law firm may have otherwise received had those users not been so diverted.
The panel concluded that the respondent violated bad faith provisions under the Uniform Domain Name Dispute Resolution Policy.
Hence, the Panel concludes that the Respondent violated paragraph 4(a)(iii) of the Policy including both the general bad faith provision in paragraph 4(b) and also the specific exemplary bad faith conduct set forth in each of paragraphs 4(b)(ii), (iii) and (iv) thereof.
Full Decision Below:Randazza v. Cox
Do you know what to do if you feel your trademark rights are being violated by another party? What if you get a notice that someone else thinks you are infringing on their trademark rights and intellectual property online? UDRP Attorney Brian Hall discusses the ins and outs of UDRP complaints with Damien Allen on today's program.
- The UDRP (Uniform Domain Name Dispute-Resolution Policy) is process that was established by ICANN or Internet Corporation for Assigned Names and Numbers, for the resolution of disputes regarding the registration and/or use of internet domain names.
- UDRP, is a process that allows somebody who believes they have trademark rights to go out and enforce those trademark rights as it relates to domain names.
- UDRP is not a lawsuit, it’s not filed in a court of law, and no monetary damages are available under the UDRP.
- Filing a UDRP does not preclude the complainant from filing a lawsuit for monetary damages or some other type of relief, injunctive or otherwise.
Announcer: Welcome to Domain Name Law Radio brought to you by Traverse Domain Name Law, internet lawyers specializing in complex litigation and domain law issues such as Domain Disputes, Cybersquatting, Domain Monetization, UDRP and Anticybersquatting Consumer Protection Act cases worldwide. Now here’s your host, Damien Allen.
Damien Allen: Good morning and welcome to Domain Name Law Radio. My name is Damien Allen. Today we’re discussing how to respond to a UDRP complaint with Brian A. Hall of Traverse Legal, PLC. Good morning and welcome to the program, Brian.
UDRP Arbitrator Sandra Franklin offers her insights on UDRP arbitrations concerning trademarks, domain names, and cybersquatting issues in this Cybersquatting Law Radio interview. Listen or read the interview below.
“It’s interesting because parking pages tend to be the trouble spot in these, and we represent as many trademark holders as do respondent domainers, but what we always tell folks is that you can take issue with the UDRP, you can take issue with the trademark law, you can disagree with it all day long, but as a smart business person, what you should be doing is acknowledging the reality of the established precedent in this area and understand that if you put up a parking page that gravitates towards a trademark use and start showing competing ads with that trademark, then you have a very difficult time getting through the UDRP without losing your domain.”
“…if you’ve got a domain that you think is worth five or six or seven figures, then parking that page comes with risk if you have no reasonable way of excluding trademark protected ads or trademark infringement type ads on that page.”
“The software made me do it is not a defense.”
“…getting back to the reality versus the wish list of what maybe someone would want the UDRP to be and not to be, but there’s very established precedent that a registrant of a domain has a duty to control their domain. So if you’re a domainer and you realize that’s the precedent, then you shouldn’t be banking on “the software made me do it” as a defense when you come to the point of a UDRP arbitration.”
“…parking pages are a big risk. They tend to be the arrow through the heart in too many cases.”
“…for those bulk domainers who just have software doing it and they never “see” the domains they register, that’s fine as a business model if that’s the way you want to go, but it doesn’t help you under the UDRP and it doesn’t help you under the ACPA that you didn’t know what was in your portfolio, because there is certainly precedent out there that places some obligation to know certain things. It’s not like Colonel Klink, “I see nothing.” It doesn’t work very well in this case.”
Announcer: Welcome to Cybersqatting Law Radio, brought to you by Traverse Cybersquatting Law, internet lawyers specializing in domain name disputes, resolutions and all other domaining issues.
Enrico Schaefer: We are here today with Sandra Franklin. Sandra is a very experienced arbitrator and mediator. She does UDRP arbitrations as well, through both WIPO and NAF. Welcome to the show today.
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.
Hobbits v. Hobbitts: Generic Mark Argument Won't Prevent Panel From Seeing Pay Per Click Parking as Bad Faith
Seemingly generic domain names can often turn into a trademark nightmare when used in combination with pay per click parking pages. A recent proceeding in front of the World Intellectual Property Organization demonstrates that a registrant’s inability to control these pay per click parking ads can result in the loss of a domain name. It is important to realize that these parking pages can be used against you as evidence of your bad faith intent to profit from the trademark of another.
Avoiding Adverse UDRP Decisions: A NAF Transfer Order of The Million Dollar Domain LH.com Does Not Bode Well For Domainers
On April 17, 2008 a NAF Arbitration Panel (David Sorkin Dissenting) ordered the transfer of lh.com from Future Media Architects, Inc. to Deutsche Lufthansa AG. Read the cybersquatting and transfer decision here. The most interesting part of the decision was the Panel's conclusion that buying and holding domain names was not a legitimate use. The Panel stated:
"Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights to or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights there from."
A recent NAF decisions illustrates a problem which domainers have been griping about for years: The UDRP can be used by overly aggressive corporations and their attorneys in order to hijack domain names in which they have no rights. The latest NAF decision in the case of Kellogg North America v Gregor Illustrates abuse of the UDRP by trademark holders all too well. Fortunately, the NAF panelist came to the correct result, finding that complainant failed to establish a lack of legitimate interest or bad faith under the facts presented.
Good thread going on over at the NamePros domain forum regarding one senior domainer's opinion that purchases of LLL.coms are growing inherently risky due to the possibility that the LLL domain can easily be taken away by UDRP. Read it here.
The thread suggests that registrants avoid ad-link programs on tho LLL.com domains in order to defeat the bad faith element necessary to show cybersquatting under the UDRP. Of course, developing a domain in a non-infringing manor or leaving them parked with no content at all can be helpful when fending off threat letters from trademark holders and UDRP arbitrations.