legal My domain KITCHN.com saved in UDRP

[AbdulBasit.com]

Hello and Assalamo Alaikum,

First, I would like to thank Mr. Howard Neu for accepting this case and later defending it successfully the domain KITCHN.com which is one of our prime properties.

Let me tell you some background before I shall tell you about the case in detail.

In October 2015, the law firm representing Kitchn.no contacted me for the purchase of my domain and started offer from $100 up to $7,000 to which no interest was shown.

Next in June 2016, the complainant filed UDRP on our domain Kitchn.com and Mr. Howard respresented me to defend and save the valuable domain.

Today, we got the news of winning the case.

Below is the detail:

“In a 3 person panel decision, the UDRP Claim for Kitchn.com was denied at WIPO. In the case of Kitchn Norge AS v. Abdulbasit Makrani, Case No. D2016-1189, a Norwegian company that held the Norwegian trademark for KITCH’N was too limited to a specific area (Norway and Sweden) as to apply to Bad Faith on the part of the Respondent Abdulbasit Makrani. Here are some of the relevant excerpts of the decision:

The Panel notes that, at the time the disputed domain name was acquired by the Respondent, the Complainant had been trading in Norway and Sweden for some 18 years, had been the proprietor of the Norwegian trademark No. 221252 for KITCH’N for some 11 years and also appears to have been selling through the Internet for almost 2 years.

There is no evidence that the Complainant’s trademark might have been used outside Norway and Sweden and the Complainant’s website clearly targets consumers located in Norway since it is entirely in Norwegian. Moreover, a Google search for “kitchn” shows several results unrelated to the Complainant and its mark.

The records indicate that the Respondent is a professional domain name registrant and acquired the disputed domain name through an automated process immediately after the original registration lapsed. As highlighted in previous cases, the automated nature of the acquisition cannot be an excuse for turning a blind eye to trademark rights, since otherwise it would be the “perfect shield for abusive registrations”. SeeResearch In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.

However, particularly given the nature of the disputed domain name as a contraction of the dictionary term “kitchen”, the Panel finds that nothing in the case file indicates that the Respondent had ever known of the Complainant’s rights or that the Respondent registered the disputed domain name to capitalize on the Complainant’s mark.

This finding is supported by the fact that the use of the disputed domain name does not show an intention to target the Complainant or its competitors, as the links displayed on the website published at the disputed domain name are mainly related to cooking recipes and not to the Complainant’s trademark and products.

Instead, in the case at hand, there is no evidence that the Respondent might have registered the disputed domain name with the intention to sell it to the Complainant or to trade off the Complainant’s mark. Therefore, the Panel also finds that the Respondent’s refusal of the Complainant’s offer for the disputed domain name and his request of a higher sum do not amount to bad faith.

In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.”

The Respondent AbdulBasit Makrani was represented in this case by the Law Office of Howard Neu, P.A.

I wanted to convey a message to all people around the world, I will try my best to defend my properties and won’t let them go easily.

Any feedback is welcome.

 

[RealLifeProperties]

Congrats Abdul!!! Love the feeling of winning a UDRP case!!

 

[AbdulBasit.com]

Domainers should join as a community and create a non-profit donation website for people who cannot afford to defend UDRP. (just a suggestion)

Congrats AbdulBasit

I have thought about the same long time back but a good reminder. I will share this with team of ICA (internetcommerce.org) and see what they have to say in this regard.

 

[AbdulBasit.com]

Congrats Abdul!!! Love the feeling of winning a UDRP case!!

Many thanks!
Yeah, that's a great feeling and I'm enjoying it

 

[2Faisal]

Congrats Abdulbasit .. May ALLAH Bless you .. wishing you a safe life with Domain names

 

[wot]

Many thanks!
Yeah, that's a great feeling and I'm enjoying it

I don't think I actually congratulated you but well done. I know the feeling, back in 1998 I won a court case against a major Malaysian company who were trying not to pay me a bonus, I had left them at the time and had to beg and borrow to raise the money to defend the case, over $20,000 but I won, and got costs.

It is scandalous that the system currently does not allow such a simple thing,would likely discourage some companies by going this route.

 

[GTLD92]

You're Great bro, Congrats i am happy for you.

 

[Sinh]

You have done well, Congratulations bro.

 

[DU]

the domain KITCHN.com which is one of our prime properties.

I didn't even knew about them until they filed complaint against my domain. But surely this domain will and always was going to cost more else their offer of 7K would have been accepted.

So even though it's one of your prime domains you didn't do a simple search for the term?
You didn't notice that the largest volume of searches for the term was in Norway and do further research?

I'm not arguing your right to the name. I'm not questioning the validity of your defense but....pull the other one.

 

[Hitesh Wadhwa]

Congrats Abdul.

 

[equity78]

I don't think I actually congratulated you but well done. I know the feeling, back in 1998 I won a court case against a major Malaysian company who were trying not to pay me a bonus, I had left them at the time and had to beg and borrow to raise the money to defend the case, over $20,000 but I won, and got costs.

It is scandalous that the system currently does not allow such a simple thing,would likely discourage some companies by going this route.

You make a good point Wot, but I remember Mike Berkens saying to me that since most of the time the company wins, the domainer would be paying their costs. I am not sure everyone wants a system where costs are paid.

It's tricky, the system needs to be improved like money for RDNH. Companies do not care if they are called a reverse domain hijacker by the domain investor community, if it cost real money they would probably care.

 

[equity78]

Yes, that can definitely be a possibility BECAUSE I have been hit with 2 UDRPs in the past which the law firm of complainant found out by searching the database of WIPO and mentioned that in recent case and said I was involved in registering domains with bad faith.

There were couple of main reasons behind those 2 UDRPs for not defending.

1. Those domains were not that important for me to fight and defend.
2. Lack of funds.

Now I will defend all my domains no matter how high or low quality of name it is. It's about my reputation and when I am capable enough to fight back, why not save myself and my fellow domainers. This win surely helps in someway to our community.

This is why domainers have to be careful about championing a loser pays system, you did not defend two names that I take it you lost. So you would have had to pay them for those two losses. The pendulum swings both ways, I am willing to bet that corporations are in favor of a loser pays system, they win way more than they lose.

Congrats on your win with Kitchn.com.

 

[wwwweb]

This is why domainers have to be careful about championing a loser pays system, you did not defend two names that I take it you lost. So you would have had to pay them for those two losses. The pendulum swings both ways, I am willing to bet that corporations are in favor of a loser pays system, they win way more than they lose.

Congrats on your win with Kitchn.com.

I think your geo location in whois could play a role in being target for weak udrp attempts.

I am sure in coming years we are going to see many 3L.com's attempt to be poached from Chinese owners, but his location being based in PK, which is a large country, but one were the UDRP fee of $1500 is the average per capita income for that country. So they miscalculated the party they were dealing with, and it came back to bite them.

I remember F S mentioning something about moving names to Uniregistry, and using the laws of the Cayman Islands, which are more stringent in the burden of proof when it comes to legal cases around domains.

But UDRP roulette played by certain parties continues to be an issue, and will continue to be so as prices rise, as does demand.

 

[DU]

This is why domainers have to be careful about championing a loser pays system, you did not defend two names that I take it you lost. So you would have had to pay them for those two losses. The pendulum swings both ways, I am willing to bet that corporations are in favor of a loser pays system, they win way more than they lose.

Congrats on your win with Kitchn.com.

As much as people hate it the system does, quite often, work. Until there is a better alternative domainers have to realize that they often operate in a gray area with gray rules. The best solution will never be the most equitable one and there will always be those who take advantage of where there is leeway but your point is valid. I don't recall a "Domainer Cybersquatting Hall of Shame" or a "Dubious Domainer Victory Hall".

In this case the advantage was a knowledgeable lawyer who would no doubt have given OP a fair valuation of success. Most domainers don't understand very basic TM laws in the US let alone the full scope of the UDRP. The UDRP is also not the final end point. There is the further opportunity to undertake that far more expensive and proper legal process if desired so even if it's imperfect it's not the end.

That end is a symmetrical system where you have what is wanted - if you lose you pay up and lose the domain and pay damages (potentially) ... if the complainant overreaches there are similar punishments. There are also different judgement criteria

Taking a name like Kitchn.com it's now got a UDRP history, an international trademark and no matter what anyone thinks it's a burden on the name. In fairness to future buyers this case needs to be remarked upon which stops the pure investor chain which isn't a big deal to OP as he was clearly not looking for resellers anyway. It does limit the market looking forward. All that's the reality of working in a unique namespace (ignore all the TLDS) with non-unique TM and company namespace. Kitchn sits right in the middle of that generic/brand name that will simply render it contentious

 

[equity78]

As much as people hate it the system does, quite often, work. Until there is a better alternative domainers have to realize that they often operate in a gray area with gray rules. The best solution will never be the most equitable one and there will always be those who take advantage of where there is leeway but your point is valid. I don't recall a "Domainer Cybersquatting Hall of Shame" or a "Dubious Domainer Victory Hall".

In this case the advantage was a knowledgeable lawyer who would no doubt have given OP a fair valuation of success. Most domainers don't understand very basic TM laws in the US let alone the full scope of the UDRP. The UDRP is also not the final end point. There is the further opportunity to undertake that far more expensive and proper legal process if desired so even if it's imperfect it's not the end.

That end is a symmetrical system where you have what is wanted - if you lose you pay up and lose the domain and pay damages (potentially) ... if the complainant overreaches there are similar punishments. There are also different judgement criteria

Taking a name like Kitchn.com it's now got a UDRP history, an international trademark and no matter what anyone thinks it's a burden on the name. In fairness to future buyers this case needs to be remarked upon which stops the pure investor chain which isn't a big deal to OP as he was clearly not looking for resellers anyway. It does limit the market looking forward. All that's the reality of working in a unique namespace (ignore all the TLDS) with non-unique TM and company namespace. Kitchn sits right in the middle of that generic/brand name that will simply render it contentious

I agree with you, the point about the mark on the name especially. I would want to get a deal done with the Norwegian company as other potential buyers may not be interested in the history of the domain, Abdul did nothing wrong, but you know how companies are, if they can avoid the grey stuff they will.

The other point is they still have recourse and that could be much more expensive, I never believe in talking about UDRP wins and revealing info until either RDNH or you came to a deal.

I do agree with @wwwweb That geo location comes into play, they do make calculations like oh the registrant lives there ? I firmly believe if they saw Name Administration, Cayman Islands, they would have come with a stronger offer.

 

[ZapNano]

Registration Date:

Kitchn.no= 2002
Kitchn.com= 2000

 

[equity78]

Registration Date:

Kitchn.no= 2002
Kitchn.com= 2000

For many panelists, that does not mean everything. If you got the name in 2014, some see that as a reset, and that you the new owner acted in bad faith. Nothing is 100%, the UDRP is complex it's not 1+1=2 sometimes it might be 1+1 =3.

 

[ZapNano]

That lawyer who represent him saw something positive; otherwise he wouldn't took his case.

 

[168]

I agree with you, the point about the mark on the name especially

This is exactly why RDNH needs to be addressed more often in cases that fail on all points. The lawyers of these companies can't claim they don't know the definition of "reg'd in bad faith" yet it is most often used as the primary basis for filing, with zero evidence. Zero. This case is a great example !
A new disturbing development is the China market moving toward Domain+trademark. Trademarks can be bought and sold outside the usa that don't have the same use requirements. Theoretically one could purchase a TM, internationalize it then go after the .com. The .com's that are resold are considered "new reg's" , Now vulnerable to reg'd in bad faith if resold after TM is established.

Trademark requirements are all over the map globally and IMHO a train wreck for domain investors on the horizon. Especially for the "investment grade" .com's
I would like to see the domain system REPLACE the trademark system as possession being the only factor except in cases of obvious targeting.

Thanks for taking a stand on this one as "No response" to these types of filings are on the rise.

 

[AbdulBasit.com]

Congrats Abdulbasit .. May ALLAH Bless you .. wishing you a safe life with Domain names

Many thanks for your kind words

 

[AbdulBasit.com]

I don't think I actually congratulated you but well done. I know the feeling, back in 1998 I won a court case against a major Malaysian company who were trying not to pay me a bonus, I had left them at the time and had to beg and borrow to raise the money to defend the case, over $20,000 but I won, and got costs.

It is scandalous that the system currently does not allow such a simple thing,would likely discourage some companies by going this route.

Good to see you got the money back and won the case. Thanks for sharing.

 

[AbdulBasit.com]

So even though it's one of your prime domains you didn't do a simple search for the term?
You didn't notice that the largest volume of searches for the term was in Norway and do further research?

I'm not arguing your right to the name. I'm not questioning the validity of your defense but....pull the other one.

Good question!

Well, I don't research each and every potential buyer when buying domain for every domain I acquire. But I remember seeing TheKitchn.com comes on top at Google for the term "Kitchn" and they have worldwide Alexa Rank 735 as of now. Compare to this company, the complainant isn't that popular on internet but seems to be huge with their offline work.

 

[AbdulBasit.com]

This is why domainers have to be careful about championing a loser pays system, you did not defend two names that I take it you lost. So you would have had to pay them for those two losses. The pendulum swings both ways, I am willing to bet that corporations are in favor of a loser pays system, they win way more than they lose.

Congrats on your win with Kitchn.com.

I think it should be paid by the complainant in case he loses and not the respondent if he loses because he didn't file the case. If someone has read my 2nd case in which I lost, he can easily assume that had I responded, I would have easily won even with that 1 member panel. That's just not fair with the current system. Why should the judgement be changed depending on responding and not responding. It should remain same yeah.

Thanks bro

 

[AbdulBasit.com]

I think your geo location in whois could play a role in being target for weak udrp attempts.

I am sure in coming years we are going to see many 3L.com's attempt to be poached from Chinese owners, but his location being based in PK, which is a large country, but one were the UDRP fee of $1500 is the average per capita income for that country. So they miscalculated the party they were dealing with, and it came back to bite them.

I remember F S mentioning something about moving names to Uniregistry, and using the laws of the Cayman Islands, which are more stringent in the burden of proof when it comes to legal cases around domains.

But UDRP roulette played by certain parties continues to be an issue, and will continue to be so as prices rise, as does demand.

Yeah, my location might have played a role but more importantly I think they filed UDRP because I have lost previous 2 UDRPs by simply *not* responding. Possible they have thought I wouldn't even respond to this as well but I gave them surprise by responding and that too with 3 members panel as they opt for 1 member panel.

Next time if someone thinking of going after me due to geo location or having previously lost 2 cases will definitely find out my winning case as well. That will make them to think and think carefully before taking any further action.

Very well said "But UDRP roulette played by certain parties continues to be an issue, and will continue to be so as prices rise, as does demand."

 

[AbdulBasit.com]

As much as people hate it the system does, quite often, work. Until there is a better alternative domainers have to realize that they often operate in a gray area with gray rules. The best solution will never be the most equitable one and there will always be those who take advantage of where there is leeway but your point is valid. I don't recall a "Domainer Cybersquatting Hall of Shame" or a "Dubious Domainer Victory Hall".

In this case the advantage was a knowledgeable lawyer who would no doubt have given OP a fair valuation of success. Most domainers don't understand very basic TM laws in the US let alone the full scope of the UDRP. The UDRP is also not the final end point. There is the further opportunity to undertake that far more expensive and proper legal process if desired so even if it's imperfect it's not the end.

That end is a symmetrical system where you have what is wanted - if you lose you pay up and lose the domain and pay damages (potentially) ... if the complainant overreaches there are similar punishments. There are also different judgement criteria

Taking a name like Kitchn.com it's now got a UDRP history, an international trademark and no matter what anyone thinks it's a burden on the name. In fairness to future buyers this case needs to be remarked upon which stops the pure investor chain which isn't a big deal to OP as he was clearly not looking for resellers anyway. It does limit the market looking forward. All that's the reality of working in a unique namespace (ignore all the TLDS) with non-unique TM and company namespace. Kitchn sits right in the middle of that generic/brand name that will simply render it contentious

Curious to know what kind of burden you are talking about will be there on the name? Suppose if any other enduser is interested in the domain, why will he care if there was any case attached to this domain as that shouldn't put any dent on his purchase.

 

[AbdulBasit.com]

I agree with you, the point about the mark on the name especially. I would want to get a deal done with the Norwegian company as other potential buyers may not be interested in the history of the domain, Abdul did nothing wrong, but you know how companies are, if they can avoid the grey stuff they will.

The other point is they still have recourse and that could be much more expensive, I never believe in talking about UDRP wins and revealing info until either RDNH or you came to a deal.

I do agree with @wwwweb That geo location comes into play, they do make calculations like oh the registrant lives there ? I firmly believe if they saw Name Administration, Cayman Islands, they would have come with a stronger offer.

That's strange and it's the company's loss whoever thinks that such history is attached with it. On the other hand, I am happy to hold this domain for a decade easily :D

Yes, @wwwweb made a good point out here of geo location which I completely agree with him. Also I agree with you that if it was Frank Schilling, they would have given a serious offer.