Introducing DomainFight.net: The World's First UDRP Search Engine

Did you ever want to search both WIPO and NAF cybersquatting decisions without having to access each provider's UDRP search tools? DomainFight.net solves this problem by searching all cybersquatting panel decisions from both WIPO and NAF from a single search engine.

Traverse Legal Radio

Play Show
With expert Enrico Schaefer
of Traverse Legal, PLC
Show Sponsor Traverse Legal, PLC
Transcript Page
Leave a comment
Download Podcast (right click-save as)

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

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."

Kellogg is Abusing the UDRP in its Effort to Secure Eggo.com.

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.

Are LLL.com Domains At High Risk For Cybersquatting Threat Letters and UDRP Arbitrations?

Logistik Labs>> Domain Tips, Tools, News and Information

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.

Technorati Tags: cyber-squat, udrp, aribtration, domains

UDRP: Lack of Use of a Domain is NOT Always a Defense

The mere holding of an infringing domain name without active use can constitute use in bad faith under the UDRP.  Despite this, all too often trademark owners watch as domains are registered that incorporate their trademark.  Unfortunately for the trademark owner, they think costly litigation under the ACPA is the only means of redress for what appears to be clear cybersquatting.  While the UDRP is cost effective and efficient, there is a general understanding (or more appropriately misunderstanding) that there must be a use of the domain name in order to file a UDRP complaint and win the UDRP.  In fact, the rules for the Uniform Domain Name Dispute Resolution Policy, states that the domain name must have been registered in bad faith and used in bad faith to satisfy the policy.  Registration in bad faith was, and continues to be perceived by some, as not enough.  That said, recent panels have held that a Respondent’s failure to make an active use of the web site, such as merely parking the web site with a web hosting company, is enough to satisfy bad faith registration and use under policy paragraph 4(a)(3).

NAF Cybersquatting Decisions Under UDRP

Recent Decisions (October 2007 - January 4, 2007) by the National Arbitration Forum (NAF) resolving domain name disputes filed under the UDRP:

Michael Smith Custom Clothiers, Inc. dba The Custom Shop dba Myshirtmaker.com v Custom Shirt Shop c/o Jim Nice.  (National Arbitration Forum January 4, 2008). Decision

National Council of Young Men's Christian Associations of the United States of America v Chen Bao Shui. (National Arbitration Forum January 4, 2008). Decision

Harrah's License Company, LLC v sysadmin admin c/o balata.com ltd.  (National Arbitration Forum January 3, 2008). Decision