IT.COM

UDRP BC30.com UDRP lost by NamePros Member

Spaceship Spaceship
Watch

Silentptnr

Domains88.comTop Member
Impact
47,106
Last edited:
19
•••
The views expressed on this page by users and staff are their own, not those of NamePros.
It's irrelevant if he's aware of the trademark now. For the 3rd part of the URDP (aka bad faith registration) it only matters if it can be proven if he was aware of the company's trademark at the time he acquired the domain (which would be back when he paid the first renewal ~8 years ago).
You are wrong, and paying their legal fees can run into tens of thousands. In Fed court they'll say that they learned that our name was trademarked and sought to profit from our trademark by selling it to us. No one cares about panelist opinion there, it starts fresh under US Federal Law.

https://scholar.google.com/scholar_...7863741&q=Dealerx+v.+Kahlon&hl=en&as_sdt=6,33

Defendant's actions after being made aware of his infringement are relevant to the bad faith analysis. In Sleekcraft Boats, the Ninth Circuit found no bad faith where the defendant had adopted the infringing mark unwittingly and, after notification, "designed a distinctive logo" to prevent consumer confusion. 599 F.2d at 354. The defendant in this case did the opposite. According to the complaint, upon learning of his infringement defendant amplified the infringement in an attempt to essentially extort money from the plaintiff. Taking plaintiff's allegations as true, defendant's behavior following notification of infringement demonstrates bad faith. The merits of this claim favor entry of default judgment.
 
4
•••
Yes .. Admittedly I was talking within the scope of a UDRP.

Although in Rob's case they already made a $4200 offer, so in the context of settlement my uneducated guess would be that's it would pass. But just to be clear my area of knowledge is focused on the UDRP.

Although that case you mention was actually what I was saying, as I'm thinking "extortion" means the domain owner contacted the trademark owner specifically for money/profit (aka outbound). If he had done nothing, or if he had only mentioned money after an incoming offer was made it could have been a different outcome.
 
1
•••
https://en.wikipedia.org/wiki/Kerry_Group they own the BC30 trademark apparently. 23000 employees, billions in revenue etc etc. They don't care about chump change to hire a local firm to defend their win. And since loser pays it's even better.

Maybe a lawyer can suggest a settlement but for $4200 maybe no one will get involved.
 
Last edited:
1
•••
Yes .. Admittedly I was talking within the scope of a UDRP.

Although in Rob's case they already made a $4200 offer, so in the context of settlement my uneducated guess would be that's it would pass. But just to be clear my area of knowledge is focused on the UDRP.

Gotta love free legal advice...

 
1
•••
That's a good one and makes financial sense for both sides, but be aware that this might be seen as bad faith: "Now you are aware of the trademark and are seeking to profit from it" they might say.

Big companies are funny, sometimes they want to make a point and bury you. Depends how much sleep their C level exec had the night before. Legal expenses are part of their life.

Yup, that's off the table.

Notice of Service of Process has been sent to the Defendant's counsel tonight. We're filing Monday or Tuesday in WA.

Also, upon further review, we think their BC30 trademark is nonsense and may challenge its validity. The legal case will allow us to pursue discovery there.
 
5
•••
Gotta love free legal advice...

Free legal advice is should only be taken with a grain of salt if it's by a non-lawyer like me! lol ... @jberryhill gives free advice and information all over NamePros and it's total gold! :)
 
3
•••
Yup, that's off the table.

Notice of Service of Process has been sent to the Defendant's counsel tonight. We're filing Monday or Tuesday in WA.

Also, upon further review, we think their BC30 trademark is nonsense and may challenge its validity. The legal case will allow us to pursue discovery there.

well, good luck. Apparently they have https://bc30probiotic.com as their site so bc30 would serve them better. Your refusal of $4200 and counteroffer will be painted as bad faith ("maybe he learned of our trademark and then judged that we want it so ...")
 
1
•••
Your refusal of $4200 and counteroffer will be painted as bad faith ("maybe he learned of our trademark and then judged that we want it so ...")
I didn't want to be the first one to say it .. but yeah ultimately I think that's their only argument that has any chance. Although I'm not sure what the actual law says on that. In theory Rob should be allowed to charge what he wants at any time. But trademarks are not black and white .. and sometimes you don't have the freedom to do just anything with your own domains. One thing is for sure .. it's going to be a very interesting case.
 
2
•••
I didn't want to be the first one to say it .. but yeah ultimately I think that's their only argument that has any chance. Although I'm not sure what the actual law says on that. In theory Rob should be allowed to charge what he wants at any time. But trademarks are not black and white .. and sometimes you don't have the freedom to do just anything with your own domains. One thing is for sure .. it's going to be a very interesting case.

It's in lawyers hands now. Or it will be when filed and served. They will pour through UDRP history, comments here and all. Lawyers have a duty to do their best for clients and they love billable hours. One side will pay them, along with a possible $100K fine and other fees, so it's no game. https://en.wikipedia.org/wiki/Anticybersquatting_Consumer_Protection_Act
 
1
•••
It's in lawyers hands now. Or it will be when filed and served. They will pour through UDRP history, comments here and all. Lawyers have a duty to do their best for clients and they love billable hours. One side will pay them, along with a possible $100K fine and other fees, so it's no game. https://en.wikipedia.org/wiki/Anticybersquatting_Consumer_Protection_Act


As for managing the expiry stream, each day I have to decide which domains to let go to Snapnames after the grace period. This is a very efficient process done through a single screen with some analytics.

On some days, the review involves a lot of names with really no time to research them. It is a quick gut decision of whether or not to let a name to go to the wolves or to warehouse them.

For sure, I had never heard of the Kerry/Ganeden people before acquiring that domain. It was just a short name. We own a bunch of those, and this one looked brandable for variety of concepts.

I do recall that initial thought was that it would be a clever name for a name for a game. ICYMI, there was a lot going on with the Roman empire on our around 30 BC. I am a fan of both history and strategy games.

That said, had the former registrant come back within 1 year, and we still had the domain, they could have placed a retail backorder for $199 and we would have honored it.

Assuming this goes to trial, we'll seek to keep the domain and challenge the validity of their trademark for the specific term "BC30" in any class, let alone the narrow class in which they were later granted a mark:

upload_2020-3-1_19-55-51.png


I am still dumbfounded that WIPO found anything other than RDNH. It looks to me like they were relying very much on the bad faith narrative.

The reality is that when I defended, e.g. Gorgonzola.city, I won the case. There was no bad faith here.

The fact is that in cases where I know I have no case, or a weak case, I simply hand over the domain. That is my consistent pattern.

I did not do that here because I thought there were one of 2 outcomes:

1. WIPO would do the right thing.

OR

2. WIPO would seal their own fate.


They did the same thing with IBM20.com. The Chinese client there had bought THOUSANDS of bulk combinations of 3 letters and 2 numbers. The registrant could not be bothered to respond and lost in UDRP.

So, as for BC30.com, I am confident that the facts are fully on my side, and look forward to justice being served, and for a high profile win against corporate sponsored WIPO thuggery.

Fiat justitia ruat caelum
 
3
•••
And again, I did predict that WIPO thuggery would be thwarted in 2020:

https://www.namepros.com/threads/happy-new-years-what-is-your-2020-forecast.1170533/

upload_2020-3-1_20-17-8.png


This was the same thread that predicted that Uniregistry would be acquired.

For the folks who shared insights with me privately, I appreciate your insights greatly and look forward to seeing justice prevail here, and to documenting best practices.

For domains registered at Epik, or names using our free Anonymize WHOIS privacy, legal jurisdiction for civil proceedings are a 30 minute drive from my home. For calibration, a pro se filing costs about $400.

WIPO has failed humanity.

Fiat justitia ruat caelum
 
Last edited:
3
•••
Personally, I'm 99.99% certain that BC30 doesn't ring a bell as a possible trademark. It might be trademarked somewhere for a certain class, but so what? Same word can be used for different areas.

Bad faith is required for you to lose this, since all conditions must be met.

Not a lawyer, and don't know about challenging the trademarks but I do remember that after a while, it becomes extremely hard to do. https://www.ny-trademark-lawyer.com...-rights-after-five-years-of-registration.html
 
3
•••
1
•••
But 100,000 other domains EVERY DAY? Really?! That seems like a fake number. Why double down on fake statistics by CAPITALIZING every day?.


as I' running f1lter.com
I actually can confirm
that its even more on a daily basis
what is dropping

even much more when you take all extensions into the equation

in the database are
"database size: 1191258 dropping domain"
as of today that 's from a 12 days period only

not including .de and other country level domains
 
Last edited:
1
•••
As for managing the expiry stream, each day I have to decide which domains to let go to Snapnames after the grace period. This is a very efficient process done through a single screen with some analytics.

On some days, the review involves a lot of names with really no time to research them. It is a quick gut decision of whether or not to let a name to go to the wolves or to warehouse them.

to get the discussion out of this thread
here is a poll

after expiry should a registrar give a domain back to the pool?

https://www.namepros.com/threads/af...strar-give-a-domain-back-to-the-pool.1179424/
 
1
•••
@Rob Monster

Glad to see you love everybody
and don't judge anybody

Depends on whether or not he is wise. He might be.

Reprove not a scorner, lest he hate thee: rebuke a wise man, and he will love thee. - Proverbs 9:8

And, believe it or not, I think you are getting wiser by the day. :)

I don't know Keith but will extend the invitation to connect one on one. That said, I do think his comments were off-topic as it relates to the thread, and his content showed lack of knowledge.
 
2
•••
as I' running f1lter.com
I actually can confirm
that its even more on a daily basis
what is dropping

even much more when you take all extensions into the equation

in the database are
"database size: 1191258 dropping domain"
as of today that 's from a 12 days period only

not including .de and other country level domains

I'm talking about total amount of domains that expire, and before dropping, the registrar renews the domain and puts it into their in house portfolio.

I'm NOT talking about the total amount of domains that expire, delete, or change ownership every day.

As previously mentioned, yesterday ExpiredDomains.net had yielded 145,887 total domains deleted in a 24 hour period.

This is what it looked like when it was reported Pheenix was warehousing:

https://www.namepros.com/threads/ph...their-customers-expired-domain-names.1048937/

So, @frank-germany, to confirm, are you saying that every day registrars move/renew 100,000+ expired customer domains into their in house portfolio?
 
Last edited:
1
•••
I think with @Keith he maybe wasn't aware of ICANN rules and that you were actually doing nothing against those rules. Also, while optically different, technically almost all the other registrars "take and profit from" their clients' expired domains by trying to sell them at auction. It's a different route, but the ultimate action is the same.

So, @frank-germany, to confirm, are you saying that every day registrars move 100,000+ expired customer domains into their in house portfolio?
@Grilled .. most domains get taken out of the client's control into the registrar's control, and then put on auction with 0% of the profit going to the owner. So the end result is exactly the same thing .. just that then the registrar throws the domain away if it doesn't sell because they judge it to be worthless .. but do NOT dismiss the fact they did originally take it away and tried to sell it for their own profit. Yes .. that happens to 50-60,000 domains a day via GoDaddy, and as they represent about half of the domain market, it isn't a stretch to say that about 100k domains a day get seized from their registrars to be auctioned. It's probably a touch less, in the 80k-90k range as I think all the other auction platforms combined are likely a bit less than GoDaddy (I only follow GoDaddy's expiration stream), but to say it's about 100k is not a big stretch.

If you go on NameCult, at the top of each daily auction listing I post the total number of domains at auction just at GoDaddy, last week there was at least one day where it hit ~64k I'm pretty sure.
 
1
•••
I'm talking about total amount of domains that expire, and before dropping, the registrar renews the domain and puts it into their in house portfolio.

I'm NOT talking about the total amount of domains that expire, delete, or change ownership every day.

As previously mentioned, yesterday ExpiredDomains.net had yielded 145,887 total domains deleted in a 24 hour period.

This is what it looked like when it was reported Pheenix was warehousing:

https://www.namepros.com/threads/ph...their-customers-expired-domain-names.1048937/

So, @frank-germany, to confirm, are you saying that every day registrars move/renew 100,000+ expired customer domains into their in house portfolio?

I am referring to the number of domains that are available for handreg/dropatch
after they had been not renewed
 
2
•••
@Grilled .. most domains get taken out of the client's control into the registrar's control, and then put on auction with 0% of the profit going to the owner. So the end result is exactly the same thing ..

Yes. This is something that has been discussed many times on namePros.

Why doesn't the registrar auction house profit share the profits of expired auction domains?

@Mr. Deleted expressed this idea in early 2018 in the Sofia thread.

I would like to see this happen: The auction houses paying a portion of the "expired" domain fee they get to the previous owner. It would make it more fair to the old time owners. It would not necessarily have to be 50%, it could be 5 or 10%, but for a 100K sale, if they never let the name expire, the name technically never dropped. I know they let it lapse, but they should not always lose 100% of their investment after 20-30 years for the email address being wrong or whatever.

To say NameLiquidate is filling this gap, is a bit of stretch. Yes, investors keep 91%. But is this a default for all Epik domains? Why not?

Does epik have an industry best standard for amount of time allowed to grace renew a domain? No.

If you go on NameCult, at the top of each daily auction listing I post the total number of domains at auction just at GoDaddy, last week there was at least one day where it hit ~64k I'm pretty sure.

I'd like to know how many customer owned domains GoDaddy renews and moves into their in house portfolio every day?

Is it anywhere near 64,000 per day?

The point here is, there is a competitive process to acquire domains, and noncompetitive.

If you're saying, buy/create a registrar, entice customers to move their domains to my registrar (or acquire other registrars with other domains under management), then renew/move their expired domains into an in house portfolio, to become more competitive, then I say no thank you.
 
Last edited:
2
•••
If you're saying, buy/create a registrar, entice customers to move their domains to my registrar (or acquire other registrars with other domains under management), then renew/move their expired domains into an in house portfolio, to become more competitive, then I say no thank you.

Finally someone who gets it! You hit the nail on the head!

The question is not whether it's allowed to bypass the expiration process but whether you should want to hold your domains at a registrar that is using this MO.

If they do, they're in right competition. Not with backorder venues and auction houses but you. The domainer. The enduser.

Let alone all the data and leads they gather while you keep the domain at the registrar. It's peanuts for them to cherry pick valuable domains with that information.

Sure, it's following ICANN rules but think about it... scale this up and... PROFIT! Common sense. Has nothing to do with Epik being either good or bad.
 
2
•••
The question is not whether it's allowed to bypass the expiration process but whether you should want to hold your domains at a registrar that is using this MO.

Sure, it's following ICANN rules but think about it... scale this up and... PROFIT! Common sense. Has nothing to do with Epik being either good or bad.

Exactly.

Contrary to what some may think, I love Rob and Epik.

I don't agree with certain policies. And I voice that.

But it has nothing to do with whether or not I think epik is being good or bad.
 
Last edited:
3
•••
Exactly.

Contrary to what some may think, I love Rob and Epik.

I don't agree with certain policies. And I voice that.

But it has nothing to do with whether or not I think epik is being good or bad.


the problem starts when you think in terms of
Good versus Bad

it's the way the leaders of the world want you to think
as that's the way they can manipulate you best

political leader
and religious leaders do so

unfortunately, that is never the case in real life

( A.H. was a vegetarian and loved his dog )

life is damned complex
 
3
•••
@Grilled .. most domains get taken out of the client's control into the registrar's control, and then put on auction with 0% of the profit going to the owner. So the end result is exactly the same thing .. just that then the registrar throws the domain away if it doesn't sell because they judge it to be worthless .. but do NOT dismiss the fact they did originally take it away and tried to sell it for their own profit. Yes .. that happens to 50-60,000 domains a day via GoDaddy, and as they represent about half of the domain market, it isn't a stretch to say that about 100k domains a day get seized from their registrars to be auctioned. It's probably a touch less, in the 80k-90k range as I think all the other auction platforms combined are likely a bit less than GoDaddy (I only follow GoDaddy's expiration stream), but to say it's about 100k is not a big stretch.

I'd like to know how many customer owned domains GoDaddy renews and moves into their in house portfolio every day?

Is it anywhere near 64,000 per day?

In May of 2018, @Joe Styler of GoDaddy said:
...We do not bid on domains or warehouse any domains that expire. We acquire our domains by buying portfolios from other domain investors or companies.
 
Last edited:
1
•••
To say NameLiquidate is filling this gap, is a bit of stretch. Yes, investors keep 91%. But is this a default for all Epik domains? Why not?
They have spoken about the possibility of doing this in the future when the platform is better developed. As a user I can tell you it's not there yet. But even the chance they will do this in the future is pretty amazing - I can't imagine another registrar on the planet being willing to do it.
 
1
•••
Back