UDRP BC30.com UDRP lost by NamePros Member

[Silentptnr]

Sorry to read that Rob Monster lost a domain and a payday. I learned from this.

https://domaingang.com/domain-law/bc30-com-udrp-what-not-to-do-when-negotiating-a-domain-sale/

Let's discuss this.

I personally have never been involved in a udrp case, but naturally I've contemplated my plan if I ever am.

 

[pb]

The Respondent has a portfolio of “four-letter” domain names. It appears that the Respondent is in the business of investing in and reselling four-letter domain names. A number of previous UDRP panels have found that as long as this kind of business is not infringing on a complainant’s rights in a mark, the Policy allows registration and use of domain names for this purpose.

Love it, I hope it becomes a standard with regards to LL, LLL, LLLL names, which at least in .com are depleted so people just buy them without any thought or intention of "infringing".

 

[jberryhill]

I hope it becomes a standard with regards to LL, LLL, LLLL names

No, it won't become a "standard", because each case has to be considered on its own merit.

If you keep reading...

"Not all instances of acquiring a “four-letter” acronym domain name would confer rights or legitimate interests on the Respondent. As the Respondent has noted, if the Respondent were to acquire domain names consisting of “SONY” or “DIOR”, the circumstances would be different. However, with the case at hand, the Complainant has not demonstrated that the Respondent was attempting to capitalize on the reputation and goodwill inherent in the Trade Mark. On the other hand, the Respondent has shown that DSPA could have numerous different meanings and the Complainant does not have a monopoly over the acronym."

That's why, as noted upthread, there will always be people who insist on silliness along the lines of "IBM" is not an immediately-recognizable world-famous mark that would require a substantial showing of legitimate rights to overcome. For domainer purposes, there is no excuse for things like that.

It's going to depend on what those three or four letters happen to be, and the broader factual circumstances.

Getting back to the the BC30 .com domain name, which this thread is about, the registrant made no serious attempt to defend the name or to litigate the decision.

 

[jberryhill]

Again .. who cares! It's not relevant in any way. He probably saw some potential value in it so kept it aside for a year for the original owner. Then after he kept renewing it for himself personally specifically for the same reason he originally saw value in it.

How is that something Rob/Epik should be responsible for? They sent out 7 emails!

There's a problem with that reasoning.

First off, let's consider this "original owner" for a moment. The name had a history involving several previous owners.

The most recent former owner prior to Rob obtaining the domain name is mentioned earlier in this thread. Apparently, he obtained the domain name through a dropcatching registrar associated with SnapNames:

So, let's be clear. When we are talking about the previous owner to Rob as "the original owner", we are talking about the trademark owner:

Having gone through the ringer with some of the dropcatching registrars which used to be formerly associated with Snapnames, it was made obvious to me that they are fairly keen on getting the auction revenue, but not particularly compliant with ICANN rules - or even adept at actually providing control to the person who obtained the dropped domain name.

So, one of the problems with this part of the discussion is that you get to pick one of two scenarios:

1. Rob had a previous relationship as a registration service provider to the trademark owner, who was the registrant of the domain name, and he was holding it for a year, or

2. Rob had no knowledge of the trademark owner.

But you don't get to pick both. He was either a customer of Rob's or he wasn't. Now, sure, the registrant data doesn't scream "this is the trademark owner", but I can tell you that Rob's apparent decision to abandon this lawsuit was a good one. Because claiming not to know the trademark owner while also claiming to have had its CEO as a customer is the kind of thing that can be used as a buzz saw to impair the credibility of a witness.

To me, it looks like the typical cheesy dropcatching registrar scenario which I've dealt with numerous times, and which often require leaning on ICANN Compliance and in-house counsel for Snapnames/Namejet/Etc. simply to get control of a domain name for which I've paid on behalf of a client. For the everyday domain registrant who is unfamiliar with the ins and outs of the domain registration system, it is a nearly impossible task.

So, anyway, the trademark owner had acquired the domain name on a drop, and it appears that the registration lasted one year at a cheesy dropcatching registrar called "dropweek" whose existence was clearly not premised on providing adequate support for retail registrants. The name expired at Dropweek.com in June 2012 (subject to the registry auto-renew grace period, which is why it was "updated" on June 4, 2012 and the expiry set to June 2, 2013 temporarily) and was picked up later in 2012:

So, Ategy, I remain confused about these "7 emails" you are talking about. Did Epik own Dropweek.com? It doesn't look that way to me:

https://www.internic.net/registrars/registrar-1078.html

DropWeek.com, LLC
5335 Gate Parkway
Jacksonville Florida 32256
United States
+1 8886429675
[email protected]


It looks to me like the trademark owner acquired the domain name through Snapnames in 2011 after Oversee dropped it. The domain name then sat at the dropcatch registrar for a year, expired again in 2012, and was picked up by Rob.

So where is this entire narrative of "The name belonged to an Epik customer and expired there" coming from?

That simply does not appear to be true.

 

[jberryhill]

At Epik, if a domain is dropped by a client and they need to recover it, for the next 1 year if we have the domain they are free to recover it for a fixed price of $199.

And the way that "we", presumably meaning Epik, does this is to register the domain name with:

Registrant Organization: n/a
Registrant Name: Rob Monster
Registrant Email: [email protected]

Rob, I have to say that if the domain name was registered to Epik, as opposed to you personally, then it's an odd thing expressly leave out the "Registrant Organization" and place your personal name into the registrant field. Of course, if the name actually belonged to Epik, then you probably know that a corporation cannot represent itself "pro se" in court by an officer of the company, but must be represented by an attorney.

One final common misconception in this thread deserves some attention:

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:

The USPTO does not "grant trademarks". The USPTO registers trademarks. If you have a trademark, you can file an application to register it. If you have an intent-to-use a trademark, then you can file an application which will not register the mark unless and until you someday use the mark.

Trademark rights in the United States do not hinge on registration. One obtains trademark rights in the US by using a distinctive mark in commerce on one's goods and services. One can obtain some procedural and enforcement advantages by registering one's trademark. But whether or not you have a trademark is not up to the USPTO.

I mean, lets take for a moment "EPIK" for domain registration services.

Are you meaning to suggest, Rob, that "EPIK" does not have a trademark for domain registration services simply because it has not been registered with the USPTO?

Of course Epik has trademark rights in "EPIK" for domain name registration services. The term "EPIK" is not generic or descriptive of such services, and clearly Epik has been providing those services in commerce for quite a while. Someone using "EPIK" to impersonate your company or offer competing services would clearly be infringing your mark, regardless of whether or not it is registered with the USPTO.

So, sure, if you filed an application to register "EPIK" in the US, the registration would not be granted until sometime early next year (on the usual timeline), but that would have nothing to do with how long Epik has had trademark rights in the mark.

Now, whether "BC30" is, is not, or has become distinctive of Ganeden's brand of Bacillus Coagulans GBI-30 is another question. But it is quite obvious that their product is strongly associated with that term (as a Google search easily demonstrates), and they claim to have been using it since 2007. So, on the question of "do they have a trademark and when did they get it" the date of registration with the USPTO is simply not the place to be looking for an answer. And, again, that's not a statement on validity, notice or anything else, but people in this industry need to get beyond thinking that US trademark registrations are the alpha and omega of whether someone has a mark and when they obtained it.

 

[Keith]

I wouldn’t trust epik.com to hold my worst domain, based on their BO policy alone, not to mention the many other shenanigans surrounding the business.

 

[Chris Hydrick]

I remain confused about these "7 emails" you are talking about. Did Epik own Dropweek.com? It doesn't look that way to me:

https://www.internic.net/registrars/registrar-1078.html

DropWeek.com, LLC
5335 Gate Parkway
Jacksonville Florida 32256
United States
+1 8886429675
[email protected]

@Rob Monster had provided additional details earlier in this thread.

I should add this.

The domain name BC30.com was dropped by a former registrant at Epik. That's actually how we got it.

- It was registered on June 2, 2011 by a registrant whose first name is "Mike".

- He never logged in again after June 3, 2011.

- We sent renewal notices 7 times as we normally do.

- When the domain dropped out of grace period, we kept it rather than sending it through the expiry stream.

Anyway, definitely no foul play here. My cost basis was 8 years of .COM renewal.

<<>>

On the 2011 registration, it was a DropCatch name.

For those who missed it, in June 2011, Epik acquired IntrustDomains, a dropcatch provider that maintained a network of dropcatching registrars.

This domain was a dropcatch in 2011.

A year later, the registrant did not renew despite 7 renewal notices.

All of the transactional events related to the domain since June 2, 2011 are fully documented in our system from inception to present day.

<<>>

On Day 36 of expiry, we send domains to Snapnames.

For cases where we think the domain owner might not be intentionally dropping a domain, we'll renew a domain into our house portfolio.

The practice is called domain warehousing and is practiced widely in the industry by registrars and it is not all bad.

In our case, had the former registrant name Mike come back to us within 1 year, they could have recovered the domain for a fixed price of $199. Obviously that did not happen.

So, we lawfully own the domain. There was no malfeasance, and there was bad faith. Ever.

The case will go forward. We'll file before Wednesday. And while we're at it, we'll seek to invalidate the BC30 trademark entirely.

In summary:

June 2nd, 2011: BC30.com acquired by Michael Bush. possibly the President of Ganeden in 2011
June 3rd, 2011: Michael Bush never logged in after today. per Rob.
July 14th, 2011: Epik/Rob announced the acquisition of Intrust Domains, which should explain how Michael became Epik/Robs customer

...

Now come to find per Michael Bush's linkedin profile, that Michael Bush was President of Ganeden when BC30.com was registered by a Michael Bush of Ohio in 2011.

I hope this gets resolved quickly, and that epik returns BC30.com to the rightful owner.

As otherwise, it appears that a domain name registrar <epik.com> threatened to invalidate the trademark <BC30> of a former customer <Michael Bush/Ganeden> in retaliation for losing a UDRP for domain name <BC30.com> of which epik had acquired through warehousing, after acquiring IntrustDomains. Such actions by a registrar do not shed positive light on the practice of domain name investing by any standard.

 

[Keith]

@Rob Monster had provided additional details earlier in this thread.



<<>>



<<>>

On day 16 expired domains with BO are supposed to be awarded. That doesn’t happen. Epik is garbage.

 

[jberryhill]

As otherwise, it appears that a domain name registrar <epik.com> threatened to invalidate the trademark <BC30> of a former customer <Michael Bush/Ganeden> in retaliation for losing a UDRP for domain name <BC30.com> of which epik had acquired through warehousing, after acquiring IntrustDomains.

You summed that up much more concisely than I could. I admire people who can say a lot with few words.

 

[jberryhill]

Epik/Rob announced the acquisition of Intrust Domains

The registrar was "Dropweek.com" which appears to be owned (at least now) by Web.com. I'm still not clear what that has to do with "Intrust Domains".

 

[Chris Hydrick]

The registrar was "Dropweek.com" which appears to be owned (at least now) by Web.com. I'm still not clear what that has to do with "Intrust Domains".

I think IntrustDomains was a network of dropcatching registrars that included DropWeek.com. I'm not 100% on that though. See below connection:

https://www.namepros.com/threads/warning-intrustdomain-domain-match-makers.658407/

I just registered with them and try to put a backorder. I believe they used to work with enom under a dozen of names of like DropHub, DropWeek ...

<<>>

https://web.archive.org/web/20120921165042/http://www.internic.net/registrars/registrar-1078.html

<<>>

 

[jberryhill]

Okay, well, that certainly ties them together. I guess that registrar was sold again later on, since it is clearly owned by Web.com now. It's interesting that in 2020, Rob kept historical login records for a registrar dating from before the time he purchased it, and which he later sold. Normally, you don't keep the proprietary business data of a business which you've sold.

 

[Chris Hydrick]

Okay, well, that certainly ties them together. I guess that registrar was sold again later on, since it is clearly owned by Web.com now.

Ties them together? yes.
Fully? no.

There appears to be more to this than meets the eye. I'm still trying to piece it all together, but to start.

• It does NOT appear the 2011 Epik acquisition of IntrustDomains included registrars

Per a few of the of 83 VERY interesting comments from a July 2011 DomainNameWire article titled, Alexander from Intrust Domains sure does get around

Rob Monster - Epik says July 20, 2011 at 11:25 pm
@Jim

We mainly bought technology for registrar management, engineering talent, and customer relationships.

The proprietary software is important for our plans around integrated “domain name asset management”.

Although we did not buy registrars in this deal, we will be acquiring proprietary registrars shortly.

For reasons that are probably obvious from the comment stream, we did not buy the email marketing business, e.g. Alex, et al.

Backorder capability remains a large strategic priority. We currently catch (well) with 34 registry connections in total and are on the lookout for more.

• Rob stated they acquired 27,000 legacy accounts in the acquisition.

Rob Monster - Epik says July 21, 2011 at 5:43 pm

@ Kevin – I think I have been clear that we did not acquire the emailing business. I think I have made that part pretty clear. As a courtesy to the owners of that business, I am simply not making a judgment statement about that aspect of the non-acquired business. I like the integrated backorder capability and I like the domain management technology and that is what we have acquired here along with 27,000 legacy accounts that we intend to serve in a professional way.

• Rob stated customers were sent an onboarding email, and were being redirected away from the Intrust website.

Rob Monster - Epik says July 20, 2011 at 4:17 pm

Email marketing and frontrunning of the drop was NOT part of the acquisition.

We are redirecting registrar customers to registrar.epik.com.

I recommend readers to read our blog posts on what was acquired and why:

http://epik.com/blog/epik-completes...ains-to-add-registar-management-platform.html

http://epik.com/blog/epik-introduces-domain-registrar-services-2.html

And no, to answer your question, the “IntrustDomains” domain names were not part of the acquisition.

A simple phone call fact check would have been warranted.

As for the Intrust brand, again, we did not buy it. We bought the customers and the technology. We did this on terms that most people would find attractive. Since customers did not previously know who Epik was we (1) sent them an onboarding email, and (2) are redirecting them from the Intrust website — a domain which I expect will eventually go away completely.

• One commenter confirmed the redirect.

SL says October 11, 2011 at 3:38 pm

intrustdomains.com redirects to…

intrustdomains.net which redirects to…

registrar.epik.com

The email address <[email protected]> used in the september 2012 internic registrar contact information from DropWeek.com is currently associated to a unregistered domain <DomainNamesInternational.net>

<intrustdomains.net> seems to be/have been connected to <[email protected]>. Not sure if this still leaves or had previously left any domains susceptible/vulnerable to theft.

I also mention this, as sometime in late 2015, HN2B.com appears to have transferred from DropWeek.com to Epik.com while retaining the <[email protected]> email address. Likely unrelated, and could just be old WHOIS info, simply mentioning as like BC30.com, HN2B.com went from DropWeek.com to Epik.com.

• BC30.com went from [email protected] to [email protected] to [email protected]

Per historical WHOIS for BC30.com

WHOIS Entry Date || Registrant Email || Registrar
May 28th, 2012 || [email protected] || DropWeek.com
July 7th, 2012 || BC30.com@BNPrivate.com** || DropWeek.com
September 20th, 2012 || [email protected] || Epik, Inc

In 2012, BNPrivate.com was registered to [email protected].

• Other domains registered by "Mike" using the same email address <[email protected]> used for the 2011 registration of BC30.com is connected to other domain registrations such as <internationalprobiotics.org> which are developed, and include text such as "How GanedenBC30 Probiotic Affects Protein and Nutrient Absorption Ganeden – Michael Bush, President". Thus, further pointing to confirmation that epik did in fact threaten to invalidate a former customers trademark (in retaliation?) after losing a UDRP for warhousing said former customers domain name.

As to exactly how Rob/Epik acquired/warehoused BC30.com is still to be told. A simple phone call to the parties involved may help clarify things, but judging by past communication regarding the matter, receiving a straight, truthful, accurate, and forthright answer may not be so simple afterall.

• Internic.net archive changes the registrar contact information from <[email protected]> to <[email protected]> sometime between the October 28th, 2012 entry, and the January 21st, 2013 entry.

Also, note the image change from "HomePage" to "BackOrderZone".

to

Interestingly enough, an earlier January 2012 internic entry shows <[email protected]> as the registrar contact info. A historical July 2014 WHOIS entry has Richard Lau connected to dotstrong.com.

• Below are archive.org entries of what DropWeek.com redirected to.

February 2011

October 2012

May 2013

Lastly (for now),

• There is a VERY interesting 2012 nP thread titled BackOrderZone.com? started by @stub where some members such as @Kate do an impressive job attempting to connect the dots between NameBind, IntrustDomains, Market Plaza INTL, BellNames, BackorderZone, NamePal, Argam Poghosian, GoName.com, SnapNames.

 

[Chris Hydrick]

A little follow up...

It does NOT appear the 2011 Epik acquisition of IntrustDomains included registrars

Rob Monster - Epik says July 20, 2011 at 6:02 pm
@Adam
For the moment, we acquired Registrar management which includes leased use of registry connections. Fundamentally, this was a technology + customer deal.

In addition to having acquired some robust domain management technology (see registrar.epik.com), we are in the process of acquiring a portfolio of registrars. This is mainly for ongoing use of registry connections with backorder operations.

Worth noting is that the technology solution that we have developed here is actually agnostic about whether you have your domain at GoDaddy, Intrust, or elsewhere. Hence the distinction between “internal” and “external” domains.

This is more similar to how a consumer uses their online brokerage account — there is relatively little regard to where the stock certificate is held. What the consumer cares about is knowing (1) the asset is held securely, and (2) they can access it upon request 24/7 via self-serve tools or via Epik customer service.

At Epik, we often use the term “Domain Name Asset Management”. We think this is an accurate way to describe what it is we are building for use by domain investors.

Hope that helps.

• Rob stated the acquisition included leased use of registry connections. In another comment, Rob mentioned 34 registry connections. Not sure how many of them were leased, and for how long.
• Rob also stated that fundamentally, it was a tech + customer deal. So does that explain how Michael Bush aka the former CEO of Ganeden became clients of Rob/Epik? They were purchased?

<<>>

• IntrustDomains, INC <IANA ID#653> received a breach of RAA notice <27 April 2012 -- during the time BC30.com was owned by fromer Ganeden CEO Michael Bush> in addition to having been deemed non-compliant for not clearly displaying on its website details of its deletion and auto-renewal policies and any fee charged for the recovery of a domain name during the Redemption Grace Period, as required by Sections 3.7.5.5 and 3.7.5.6 of the RAA.

• Seeing how Epik is <IANA ID# 617>, not <IANA ID# 653> does the non-compliance notice apply to epik, given epik had allegedly acquired Intrusts 27,000 customer accounts and registry business? And what happened to the customer accounts after the registry connection lease expired and when the registrars were sold to other entities?

History of IANA #653 <eg. Registrar: Intrust Domains, Inc>

August 2004: That Darn Name, Inc <[email protected]>
June 2009: That Darn Name, Inc <[email protected]>
June 2010 - October 2012: Intrust Domains, Inc** <[email protected]>
January 2013 - July 2014: YourJungle, Inc. <[email protected]>
March 2015 - June 2016: NamePal.com #8028 <[email protected]>
September 2016 - Current: NamePal.com #8028 <[email protected]>


History of IANA #617 <eg. Registrar: Epik.com>

December 2004 - June 2009: NameQueen.com, Inc <[email protected]>
June 2010: NameQueen.com, Inc <[email protected]>
November 2010 - January 2012: NameQueen.com, Inc <[email protected]>
September 2012 - Current: Epik, Inc. <[email protected]>

• In November 2015, Rob had commented on nP that Intrust Domains LLC** owns 0.87% of epik.

2) Intrust Ownership of Epik: Intrust Domains LLC owns 0.87% of Epik. These shares were issued as part of the consideration to acquire Intrust's registrar operations in 2011. No other assets were acquired in that deal. Intrust does not have any Board representation and have never had any. This asset purchase was done with Kenn Palm in 2011. Kenn has since left the domain industry altogether. I am still in contact with Kenn as I am a reference for his IT Consulting Business, Pilgrim Consulting.

 

[jberryhill]

...and another reverse domain hi-jacking decision in favor of a domain registrant by panelist John Swinson:

https://domainnamewire.com/2020/09/...domain-name-hijacking-mountaintop-com-domain/

I’m thinking maybe it wasn’t the panelist.

 

[Chris Hydrick]

Looks like BC30.com has finally been transferred to the complainant.

Domain Name: bc30.com
Registry Domain ID: 1659541390_DOMAIN_COM-VRSN
Registrar WHOIS Server: whois.corporatedomains.com
Registrar URL: www.cscprotectsbrands.com
Updated Date: 2021-03-03T12:19:18Z
Creation Date: 2011-06-02T15:03:22Z
Registrar Registration Expiration Date: 2022-06-02T19:03:22Z
Registrar: CSC CORPORATE DOMAINS, INC.
Sponsoring Registrar IANA ID: 299
Registrar Abuse Contact Email: [email protected]
Registrar Abuse Contact Phone: +1.8887802723
Domain Status: clientTransferProhibited http://www.icann.org/epp#clientTransferProhibited
Registry Registrant ID:
Registrant Name: Domain Administrator
Registrant Organization: Kerry Luxembourg S.a.r.l.
Registrant Street: 17, rue Antoine Jans
Registrant City: Luxembourg

Edit: Hi @Samer I see you liked this comment, then removed your like.

 

[jberryhill]

However, as with the VisitQatar.com case, you can hire a good lawyer and still lose.

You mentioned that case several times in this thread.

News Flash: When you lose, you can fight back, but you have to actually fight back.

This just in from the Mutual Jurisdiction (Colorado, since Name.com was the registrar):

 

[Rob Monster]

News flash John, the case was settled out of court on amicable terms. We dropped our civil action and the defendant has their domain. The exact terms of the settlement will not be disclosed.

The point of this entire exercise was to confirm that it is indeed possible to overturn an erroneous UDRP decision through a civil action.

In this particular case, it was filed pro se, which meant not hiring outside counsel to prove a point but to earn a pyrrhic victory where legal fees are more than the domain is worth.

Ultimately it would have been much more efficient if counsel had simply offered a fair price for the domain and been done. Instead we had to go through UDRP and Federal court to get to the same outcome.

I proved my point and now have nothing further to add to this thread.