Another UDRP win by AbdulBasit.com with Howard Neu

Discussion in 'Legal Discussion' started by AbdulBasit.com, Nov 8, 2017.

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  1. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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    Hello and Assalamo Alaikum,

    It's never a good thing for domain owner to get hit with UDRP.

    With our last UDRP win for Kitchn.com, this time it was PrintFactory.com on target. I already mentioned about the acquisition of this domain some time back. ALL credit goes to Howard Neu for saving another valuable domain.

    Below is the abridged opinion of case #D2017-1679 at WIPO.INT.

    “The Disputed Domain Name resolves to a pay-per-click (“PPC”) site, which mentions that the domain name “may be for sale”. When the Complainant, via an unknown individual, inquired about a potential purchase of the Disputed Domain Name, the Respondent offered to sell the Disputed Domain Name in exchange of a six-digit figure amount. An earlier request by the Complainant to purchase the Disputed Domain Name resulted in a five-digit figure amount offer.

    B. Rights or Legitimate Interests

    The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g., WIPO Overview 3.0, section 2.1.

    The Complainant considers that the Respondent aims at selling the Disputed Domain Name and that the Respondent is only parking the Disputed Domain Name on a page comprising PPC links to websites that are in competition with the Complainant’s activities. In response, the Respondent submits that the Disputed Domain Name refers to PPC advertising relating to the dictionary meaning of the words “print factory” only. The Respondent considers such use a legitimate business use.

    Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

    Using a domain name to host a page comprising PPC links surely constitutes a very minimal use of the domain name. Nevertheless, panels have recognised that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.” (See WIPO Overview 3.0, section 2.9).

    In the case at hand, there is no evidence that the Respondent is trying to trade off the Complainant’s (or any of its competitors’) trademarks. The PPC links on the website associated with the Disputed Domain Name appear to be genuinely related to the dictionary meaning of the words comprising the Disputed Domain Name. The PPC links are not related to the goods for which the Complainant has registered trademark rights.

    The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.

    Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.

    C. Registered and Used in Bad Faith

    In view of the Panel’s findings under the second limb of the Policy, there is no need for the Panel to consider the third requirement under the Policy as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.

    In any event, the Panel considers that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith. Surely, the Disputed Domain Name appears to be registered primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. However, no evidence suggests that the Respondent had the Complainant or its trademark in mind when registering the Disputed Domain Name. The value the Respondent attaches to the Disputed Domain Name appears to be inspired by the dictionary meaning of the Disputed Domain Name, and not by the identity of parties that may be interested in acquiring the Disputed Domain Name.”


    The Panel consisted of Flip Jan Claude Petillion, Presiding Panelist, Gregor Vos and Tony Willoughby.

    Once again I thank Mr. Howard Neu for representing and defending the domain.

    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.
     
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. pablohc86

    pablohc86 Active Member VIP

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    Congratulations Abdul.
    However nowadays is too little just win an UDRP, i want that when the domain owner win, the complainant have to pay for the time lost and the hassle other than all the fees that the domain owner need to pay to defend his rights.
     
  3. UniflexDomains

    UniflexDomains Established Member

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    Does a successful UDRP defence mean the defendants legal fees are paid by the accuser?
     
  4. fitkhan

    fitkhan Established Member

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    W/Salam Abdul Basit. Great news. Congrats.
    Can you get back the money you spent on defending your domain?
     
  5. pablohc86

    pablohc86 Active Member VIP

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    UDRP defence is paid by domain owner and you have no refund neither if you win..
    I hope ICA could do something in the future for this.
    I also believe that if more domainers will join them, our rights could have a louder voice.

    I'm still not with them but I plan to join asap
     
  6. Skyvisum

    Skyvisum Active Member VIP

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    Good news to hear Abul. Why cant they just pay you your asking price instead of trying to now steal your assets from you.Very encouraging news and kudos to Howard Neu. Will save your contact for future reference.Its just painful it cost 4 figures to try to defend your assets and the culprit don't pay nothing.Definitely worth 6 figures.
     
  7. main

    main Active Member VIP

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    Congrats Abdul. The good guys win! Another stellar domain.
     
  8. pchip

    pchip Established Member ★★★★★★★★★★

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    Congrats on your UDRP win and Thanks for sharing!

    It's sad that these companies resort to trying to steal the domain from you when they don't like the price. I guess they do it because there are limited to no consequences if it fails.

    I think at the very least they should have to pay some type of monetary penalty if they lose.
     
  9. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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    @pablohc86
    Thanks!

    I agree that there should be some monetary penalty on complainant when they lose. And more big penalty when they are labeled with RDNH. On the other hand, complainant can ask for the same monetary penalty if the respondent loses the case but here I don't agree since the complainant gets away with the domain name which is what they target for. In the end, there should be balance between both parties.

    @UniflexDomains
    No. Even if the domain owner successfully defends, there is no gain for domain holder other than by keeping the domain back in his account safely.

    @fitkhan
    Thanks Owais bhai.
    Only the domain which is already in my account but was locked for transfers. Now it will be back to normal state.

    @pablohc86
    I'm sure they are working on it but seems that will take load of time to hear good news domain owners are looking for...

    @Skyvisum
    Thanks dear. They tried to buy at first but with their 5K max offer and our asking price in 6 figs definitely triggered them to think of going the other route.

    @main
    Thanks Ehren :)

    @pchip
    Thanks and glad you like the decision.
    I completely agree with you on having at least monetary penalty if they lose. I'm sure there would be much decline in UDRP filings if monetary penalty is imposed.
     
  10. DOMAIN ILLUMINATI

    DOMAIN ILLUMINATI Owner of ▲ the most expensive domain of all time. Business Account

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    Congrats, if you fight for your right, you fight for others too.
     
  11. 1Darko

    1Darko Established Member

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  12. abdou01

    abdou01 Established Member

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    Congrats!
    Very good Job (y)
     
  13. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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  14. DomainVP

    DomainVP Domain Expert Business Account VIP

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    So what does this do to your asking price Abdul?

    Do you keep it the same, or do you increase the amount in punitive manner to punish them for the cost of fighting this UDRP.

    I would like to hear your thoughts on this.
     
  15. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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    In such case, I don't like to shoot up price by large extent. The main reason behind that is there is no benefit of trying to take revenge. But I do consider the risk factor involved in UDRP, time invested, money, etc.

    If there was more flexibility in reducing the price while negotiating, surely that's either not going to be there or will have very limited room for negotiating the price now. As I have to cover all aspects.

    Anyone have different point of view, feel free to share it.
     
    Last edited: Nov 10, 2017
  16. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Would you like that to work both ways? Or only for the one side?
     
  17. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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    When complainant wins, they get the domain which is their ultimate target. For respondent, either a win or lose, money is gone in responding to UDRP. There should be at least monetary penalty for complainant in case they lose. This will keep things in balance and future filings would drastically reduce when penalty will be considered.
     
  18. pablohc86

    pablohc86 Active Member VIP

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    Yes I thought that also... as if there is a monetary remboursement for the respondant when he wins, there should be something also for the complainant in the case of his victory.
    However, like Abdul said, if the complainant wins, they get the domain name that usually it's worth more than just 5000$ also if sold to the wholesale market.

    Do you think the UDRP process is fair for both the sides now?
    I think no, maybe as you are very experts in these matters, you could be able to suggest a most fair solution for both.

    I'm not being sarcastic but I really believe that lawyers like you could give a great hands to put UDRP more fair for both as nowadays for the domainer is just a lost also if he wins.
     
  19. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    I'm not to sure about "usually" in that context. Much of the time they get a domain name that they didn't actually want, but which was perceived to be used for typosquatting, counterfeiting, phishing, etc..

    Take a look at the recent pending case list at WIPO, for example:

    http://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2017&seq_min=2200&seq_max=2399

    It's "round up domains month" for BASF, and pretty obviously BASF is going to win all 6 of them.

    But how do you think these cases are going to go:

    D2017-2229 yahoosupporthelp.com
    D2017-2230 yahooemailsupportnumber.com
    D2017-2231 yahoo-supports.com
    D2017-2232 contactyahoocustomerservice.com, yahoo-customer-service.org

    or these:

    D2017-2248 michelinprize.com
    D2017-2249 chinamichelin.com, chinesemichelin.com

    Or these ones (with international characters or numbers filling in to make visually confusing names):

    D2017-2211 ıĸea.com (Ikea)
    D2017-2247 l0real.com (L'oreal)
    D2017-2238 stat0il.com (StatOil)

    Now, sure, there are a couple of interesting ones on that list (ivi.com, ktg.com), but by and large these are nuisance domain names that these companies don't even want, but go after in order to avoid them being used for illicit purposes. There's no $5000 value to these names. The complainants are spending a good chunk of change to go after names which are clearly abusive and they wouldn't have bothered with, but for the fact that someone registered them and was doing whatever with them.

    It's easy to throw around words like "usually", but absent some actual data, it's just a word thrown in for effect, and not based on any actual analysis. One of the depressing things about having been at this for a long time is how supposedly intelligent people of all kinds just casually throw around generalizations which are not based on any actual data.

    Of the 51 cases listed there at the time of this post, there are maybe four or five that are "interesting", and a couple of them that are "very interesting", like ivi.com and ktg.com.

    "Fair" is an interesting word. I've done a couple hundred of these cases for domain registrants, and I can go on all day about circumstances or decisions that were unfair.

    For one example, fresh this week.... WIPO has a 5,000 word limit on the legal arguments in the complaint and the response. Is that rule fair?

    Well, sure, it applies to both sides, right?

    One observation you could make is about the "fairness" of the rule per se. In, for example, the URS, which is supposed to be for drop-dead simple cases, the original proposal was for a 250 word limit for both sides. The problem there, which I pointed out at the time, is that it is really easy to make an accusation - "That guy is a cybersquatter" is five words. The trouble is that an explanation of why a domain name is registered and used, in response to that accusation, is going to take more than five words. Ultimately, that argument won, and that's why the URS has asymmetric word limits for the complaint and the response. There are still people who don't understand that, and they believe the URS is unfair because the Respondent is given more words.

    But, returning to the WIPO 5,000 word limit, I believe the rule is fair. The problem is that it isn't actually enforced, and has no consequences.

    This week, and for the third time this year, I had to prepare a response to a complaint which exceeded the word limit. This week's case had a Complaint in which the argument was 6,934 words. That's almost half again the limit.

    The Complainant didn't know about, or care about the rule, and WIPO went ahead and processed the complaint.

    So, what's supposed to happen? Do I then take liberties with the rule in order to address the extra nearly 2000 words of argument? Or do I follow the rule and limit myself to 5,000 words?

    It's not as if the Panel is going to "unsee" the additional words in the Complaint, but asking the Panel to reject the complaint because it is over the limit, is certainly not something that's going to happen.

    And that's just one example - I deal with similar sh*t all of the time. Most of the time, the "unfairness" is not in the rules or the policy, it's in how the rules are administered and how the policy is applied.

    At the end of the day, what the rules are, or what the policy says, is not as important as having checks on how they are actually interpreted and applied. The identical UDRP has been interpreted and applied to reach some really good decisions, and it has also been interpreted and applied to reach some really bad decisions. What I haven't seen anyone do, in relation to any proposed change of the policy, is to say "Here's the list of decisions that would have gone differently, one way or the other, if my proposed change were made." These proposals are not really being made on the basis of any such kind of data-driven analysis of "what is it that is wrong, which we are trying to fix?"

    The question of "what outcomes would have been different?" is a question that nobody in the discussion asks or answers, because unlike hypothetical predictions, it requires some actual work. But asking the question "Which cases would have been decided differently?" should be a pre-requisite for any proposed change.

    Of course, the bullsh*t answer would be something along the lines of "Oh, but we'd file cases that otherwise have gone un-filed to address (insert hypothetical abuse scenario)", so the conversation would simply turn back to the same imaginary bullsh*t.
     
  20. pablohc86

    pablohc86 Active Member VIP

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    really thanks for taking the time to write this answer.
    it makes me reflect a lot.
    Now i can understand better how much is hard to get something more "fair" for both the parts.
     
  21. bashariqbal

    bashariqbal Established Member

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  22. richface

    richface Active Member VIP

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    Price your expenses into your next quote if that same buyer approaches you ask for 7 figures :xf.grin:. This is becoming a Joke UDRP needs to be reformed any frivolous complaint should result in punitive measures preferably stiff financial sanctions..
     
  23. Weber

    Weber Established Member ★★★★★★★★★★

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    I found these comments from the panel interesting, especially the sentence I highlighted.

    "The file does not show that the Complainant knew or should have clearly known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. The Complainant is not unreasonably ignoring established Policy precedent. In many cases, the use for PPC purposes of a domain name which is identical to a trademark, combined with an offer to sell the domain name for valuable consideration will satisfy the requirements of the Policy. Those precedents might have led the Complainant to believe that domaining is not admissible under any circumstances. We should be reminded that the domaining business was not an activity which was intended when the Domain Name System was created. Admittedly, the domaining business is less known in Europe than in other parts of the world, and trademark holders keep being surprised by speculative business models that are developed around the scarce resource that domain names are. As a result, the Panel finds there to be no evidence of RDNH."
     
  24. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Yes, in many cases that's true - particularly if the PPC ads are targeting the trademark meaning of the term. There are monetization services that allow custom PPC targeting to avoid that happening.
     
  25. AbdulBasit.com

    AbdulBasit.com AbdulBasit.com AbdulBasit.com PRO VIP ★★★★★★★★★★

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    Thanks for your suggestion but that's highly unlikely if not impossible to strike a deal by asking 7 figs.
    I agree on reforms are needed.
     

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