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Renew a domain, lose a UDRP?

Kevin Murphy, February 2, 2011, Domain Policy

Renewing a domain name could land you in hot water if you’re hit with a UDRP complaint, if some current thinking at the National Arbitration Forum gains traction.

In the recent NAF decision over FreeGeek.com, panelists argued that if a domain was not originally registered in bad faith (because no trademark existed at the time) renewing the domain after a trademark had been obtained could nevertheless be used to demonstrate bad faith.

Showing that a disputed domain was registered and used in bad faith is of course one of the three pillars of UDRP.

Free Geek Inc runs its web site at freegeek.org. It wanted the .com equivalent, which was registered in 2001, six years before the company acquired a US trademark on its brand.

FreeGeek.com is owned by by Kevin Ham’s company, Vertical Axis. The registration has been renewed every year since 2001.

The three NAF panelists were split on whether renewals post-2007 should be considered evidence of bad faith.

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.

That’s a disturbing statement, if you’re interested in registrant rights – two panelists basically want domain investors to relinquish their domains if somebody else subsequently acquires a trademark.

What’s more, the panelists’ position appears to be based on a dodgy interpretation of recent UDRP precedent. The decision goes on to say:

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark. In RapidShare AG and Christian Schmid v. Fantastic Investment Limited… a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.

It’s a dodgy interpretation because the referenced case, rapidshare.net, does not in fact discuss renewals at all.

In that case, bad faith was actually shown to have arisen due to the domain (which had survived a UDRP just a few months earlier) being bought by a new registrant, not due to a renewal.

What we seem to have here is a case of a couple of NAF panelists thinking about trying to expand the scope of the UDRP. There’s a ton of precedent concluding that renewals are not relevant when establishing whether a domain was registered in bad faith.

With that in mind, you’d think the case would have been a slam-dunk win for the complainant. Not so.

In fact, Ham prevailed on the basis that he had acquired rights to the domain by simply parking it, which constituted a legitimate commercial use.

This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes

Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page. Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy

If there are any recent UDRP cases that show just how random a process it is, this is the one.

Noel Gallagher buys domain name with gig tickets

Kevin Murphy, January 31, 2011, Domain Sales

Former Oasis lead guitarist Noel Gallagher reportedly bought the domain name noelgallagher.com from a squatter in exchange for band memorabilia and free gig tickets.

According to British tabloid The Sun:

The former OASIS star found out recently that a cunning punter in Barcelona had snapped up the domain name noelgallagher.com ten years ago.

And The Chief’s plans to get things in order for his solo career were being held up by the Barca Bandit – because he was demanding a small fortune to hand it back.

Noel took matters into his own hands last week. He paid for the Spaniard to fly to London, put him up in a plush hotel and met him in person to thunder out a deal.

And after some serious haggling, and a few Oasis anecdotes, the chancer changed his demands from tens of thousands of pounds – to some signed memorabilia and guest list action at Noel’s next solo gigs.

I’m not sure how much success Oasis ever had outside of the UK. If you’ve never heard of them: briefly here in the 1990s they were regarded by some (mainly themselves) as the second coming of The Beatles.

I’ve never before seen a domain name story reported in The Sun, a notoriously unreliable but hugely popular Murdoch-owned daily rag, so I did a bit of fact-checking.

Whois history shows that the original registrant was from Madrid, not Barcelona, and that the domain was initially registered in 2002.

While the report claims Gallagher flew the squattter to London to negotiate the deal “last week”, the domain actually seems to have been owned by someone at Oasis’s record label since March 2010.

So either the cybersquatter got a free city break, or The Sun is — shockingly — reporting unreliable celebrity news.

The domain name does not currently resolve.

UDRP tip: put your domain in the Whois

Kevin Murphy, January 25, 2011, Domain Policy

If you’re fighting off a bogus UDRP complaint on one of your domain names, the onus is on you to prove that you have “rights and legitimate interests” in the domain.

That could be tricky, especially if you think you may been assigned a panelist with a pro-complainant bent, but there may be some ways to mitigate the risk of losing your domain.

Take this recent case, for example: PissedConsumer.com versus ThePissedOffConsumer.com.

The panelist determined that the registrant of ThePissedOffConsumer.com had no “rights and legitimate interests”on the grounds that a) it was competing with the complainant, b) the web site used the same color (red) as the complainant and c) the registrant was not known by the domain.

Ignoring the first two (highly debatable) findings, let’s look at c). The panelist wrote:

Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities. The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.”

The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name

In other words, because Whois showed the name of the registrant, rather than the name of the domain, the registrant was not “commonly known” as the domain and lacked rights.

To add insult to injury, the complainant was assumed to have earned the right to the mark “Pissed Consumer” before it had officially acquired a trademark (and before the disputed domain was registered) simply by virtue of operating PissedConsumer.com, despite the fact that it hides behind Whois privacy and is called Consumer Opinion Corp.

Presumably, if Cross had simply added the text “ThePissedOffConsumer” to his Whois record, the panelist would have had one less data point “in the record” to justify his finding.

In fringe UDRP cases, that could prove a useful defensive tactic.

TorrentReactor.net wins TorrentReactor.com case

Kevin Murphy, January 21, 2011, Domain Policy

The World Intellectual Property Organization has handed the domain name TorrentReactor.com to the owner of TorrentReactor.net, one of the internet’s most-popular BitTorrent movie piracy sites.

Really.

TorrentReactor.net owner Alexey Kistenev filed a UDRP complaint over the .com version with WIPO last year and won it earlier this month.

It was actually the second time he had taken the domain to arbitration.

Kistenev’s first complaint was dismissed by WIPO in March 2009, on the grounds that he did not have a valid trademark.

A month later, he applied for a US trademark on “TorrentReactor”, which was granted in July last year, and the UDRP was refiled in October.

In the latest case, Kistenev was helped by not only the fact that he now owns the trademark but also the fact that the domain has changed hands since the original complaint.

I wonder how much the current owner paid. In 2008, the then-owner had tried to sell it to Kistenev for $150,000. When he countered with a $30,000 offer, the owner asked for $50,000.

TorrentReactor.net is a page-one Google hit for searches including [torrent movies] and [torrent music].

Its front page contains links to torrents of recent, copyrighted movies such as The Social Network, Red and Let Me In, as well as new software, TV shows and music.

What we seem to have here is a case of WIPO indirectly helping piracy.

I guess it shows that WIPO arbitration panels can apply the UDRP uniformly when they want to.

Red Bull files UDRP after domain expires

Kevin Murphy, January 17, 2011, Domain Policy

Energy drink maker Red Bull has filed a UDRP complaint over the domain name red-bull.com, which until recently it actually owned.

It’s moderately embarrassing, but not unheard of, for companies to turn to the UDRP after domains they allow to expire are then snapped up by squatters.

What makes the complaint unusual is that the domain red-bull.com is not an obscure fringe case – it’s virtually identical to the company’s trademark and to its primary domain, redbull.com.

Also, according to Whois records, Red Bull also appears to use MarkMonitor, the brand-protection registrar, for its domain name needs.

Whois history shows that Red Bull acquired the domain in about 2005, but allowed it to expire in September 2010, after which it was quickly acquired by a third party.

Did Red Bull deliberately allow it to expire? There’s a case to be made for rationalizing defensive registration portfolios to reduce costs, but this domain would seem (to me) to be a definite keeper.

MarkMonitor has a policy of declining to comment on clients, which it chose to exercise when I inquired.

The domain red-bull.com currently resolves to what can only be described as a splog. It shows up on page two of Google for the search [red bull], which may go some way to explaining the UDRP.

Red Bull acquired red-bull.net, red-bull.cc and red-bull.tv via UDRP proceedings between 2001 and 2004, but has since allowed all three, as well as the .org, which it also owned, to expire.

The .tv and .net versions are currently parked, meaning they don’t rank so well in search engines.

It’s not the first odd UDRP Red Bull has filed. Last year, it lost a UDRP complaint despite winning a court case over the same domain name, as I reported in June.

Go Daddy files UDRP on “Mad Dog” host

Kevin Murphy, January 5, 2011, Domain Registrars

Go Daddy has filed a UDRP complaint against a web hosting company that uses a similar brand to sell domain names, maddogwebhosting.com.

The domain appears to have been used by a small-time hosting reseller for about two years. Its mailing address is a flat in south London.

But Go Daddy subsidiary Mad Dog Domains, which also sells hosting, has been around for longer and appears to have a trademark on its brand.

It’s not really an open-and-shut case by UDRP standards, given that Mad Dog Web Hosting appears to be a legitimate site, but I suspect Go Daddy has a reasonably good chance of prevailing.

We’ll have to wait for the ruling to be made and published by WIPO to find out the full details.

Is Microsoft buying Kinect.com?

Kevin Murphy, December 30, 2010, Domain Sales

Did Microsoft just file a UDRP complaint on a typo of a domain name it doesn’t even own?

When Microsoft announced its new Kinect games console earlier this year, it did so without owning the domain kinect.com, as I blogged at the time.

But this week somebody – I’m guessing Microsoft – has filed UDRP on the typo wwwkinect.com, which was registered about the same time as the console launched and is currently parked.

The complainant’s name doesn’t seem to be available yet, but the case was filed the same day as several other Kinect-related UDRP cases that almost certainly are Microsoft’s work, such as microsoftkinect.com.

Kinect.com currently belongs to an advertising agency called CAHG. The domain isn’t resolving (for me) at the moment, which makes me wonder if it’s in the process of changing hands.

It would certainly be unusual for the company to own a typo of somebody else’s domain, although I don’t think there’s anything in the UDRP rules that would prevent it winning the case.

UDRP, after all, only compares contested domains against owned trademarks, not domain portfolios.

While Microsoft would not have a leg to stand on if it filed UDRP against the non-typo domain, I expect a good case could be made that the large majority of people typing “kinect.com” into their browsers are looking for Microsoft’s console.

Alexa is showing that kinect.com has experienced a 350% increase in traffic over the last three months, and has increased its Alexa rank by almost two million places.

UPDATE 2011/01/01: Microsoft now owns the domain.

Save the Children recovers domains from scumbag

Kevin Murphy, November 22, 2010, Domain Policy

The international charitable organization Save the Children has recovered two domain names from a squatter who held them hostage for $2,500.

Save the Children, which hosts its official web site at savethechildren.org, recently won a UDRP complaint for the domains save-the-children.com and save-the-children.org, which are both parked.

As you might imagine, it was an open-and-shut case.

Save the Children has been around since the 1930s, and it owns trademarks on its name.

Bad faith was proved with a shockingly clueless email from the registrant:

As you may be aware, with the explosion of the internet and domains, there has been a scramble by speculators or entrepreneurs to purchase popular names or names which we believe may become popular, so we can resell them for a profit. In fact, many businesses will buy numerous domain names that are similar, or may be abbreviations or acronyms, or with different suffexes [sic] in order to get them off the market and prevent somebody else purchasing it.

After consulting with my attorney, and in the best interests of a speedy resolution, I’ve been advised to offer to sell my domain to your client.

I am unwilling to give it up for free since I purchased it. However, I am willing to sell it, and I am asking $2,500.00 for my website.

Whois records show that the domain has changed hands a few times since it was first registered in 2001. I hope the current registrant paid a lot for it.

This kind of behavior is why domainers get a bad rep.

Lego files a UDRP complaint every three days

Kevin Murphy, November 1, 2010, Domain Policy

Lego, maker of the popular building block toys, is rapidly becoming one of the most UDRP-happy big-brand trademark holders.

The company recently filed its 150th claim, and has so far recovered well over 250 domains that included its trademark.

With over 100 UDRPs filed so far in 2010, that works out to an average of roughly one complaint every three days, and a total spend easily into the hundreds of thousands of dollars.

Its success rate to date is 100%, with no complaints denied.

Its successfully recovered domains include oddities such as legogiraffepenis.com, which appears to be based on this amusing misunderstanding.

If Lego keeps up its current rate of enforcement, it will likely pass Microsoft in the next few months in terms of total cases filed. It’s already filed more than Yahoo and Google.

But it still has a long way to go to catch up with AOL, possibly the most prolific UDRP complainant, which has close to 500 complaints under its belt.

Businesses to object to Arab UDRP provider

Kevin Murphy, October 27, 2010, Domain Policy

ICANN’s business constituency is to object to a new Jordan-based UDRP provider, saying that no new providers should be approved until rules governing their behavior are put in place.

The BC reckons that UDRP decisions need to be more consistent and predictable, and that a good way to achieve this would be with standard accountability mechanisms.

In a draft position statement, expected to be finalized and filed with ICANN tomorrow, the BC says that it:

strongly advocates that ICANN must first implement a standard mechanism with any and all UDRP arbitration providers that defines and constrains their authority and powers, and establishes regular and standardized review by ICANN with flexible and effective means of enforcement.

Its comment is expected to be filed in response to the Arab Center for Domain Name Dispute Resolution’s request for official recognition as a UDRP provider last month.

The BC does not appear to object to the ACDR on its own merits or on the basis of its location.

The statement notes that registrars are bound by contracts setting the rules for domain registrations, but that UDRP providers can force transfers unconstrained by any ICANN guidelines or oversight.

It’s well-known that UDRP decisions from the various existing providers are currently about as predictable as flipping a coin, with panelists frequently interpreting the rules along quite different lines.

The BC seems concerned that this could be exacerbated as more UDRP providers are approved and as new TLD registries start popping up in different countries.

The draft statement notes that currently about 99% of UDRP cases are heard by WIPO and NAF, and that most gTLDs are “based in a limited number of national jurisdictions”.