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.

 

[branding]

We have saved some folks' bacon though. I can tell you that much.

Exept for bacon.world. 11 hours to go .

In all honesty, I don't blame you for picking up that domain but most people don't like this practice. No matter who the registrar is so @Keith does raise a fair point.

But yeah, let's not get sidetracked. Following what happens as this decision is insane and concerning.

 

[Rob Monster]

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.

 

[jberryhill]

Aaaaaand here it is:

 

[jberryhill]

I would like for Rob to respond to the court and defend his domain name.....

At this point, what the court is looking for is Rob's explanation as to why he hasn't formally notified the other side of the suit.

Typically, there are a few excuses, ranging from "We've been trying, but the other side is slippery" to "we've been in settlement discussions and the parties agree to extend the time" to "the legal requirements for service in Luxembourg have bogged us down, but we have at least started the process."

Blaming Covid-19 is popular in a lot of contexts, but it's not much of a starter either. I've had legal proceedings served in the last couple of months, and haven't had any real issues with it. Both of the defendants are corporations, so it's not as if they are going to be hiding out somewhere. Corporations have registered addresses and registered agents for this exact purpose.

I mean, for the primary defendant, in Ohio, you could expect to spend $95:

https://www.abclegal.com/states/ohio

• Serve anywhere in Ohio for $95
• Service is usually complete within 4 days
• Your court will accept our proof of service, guaranteed

For serving a defendant in Luxembourg, you can expect to spend around $1500, just based on what I have generally had to pay for service on defendants in the EU.

But, the first thing you do when you file a suit is contact the other side to see if they would like to waive formal service of process. For one thing, you save money right away. The defendant gets additional time to file an answer (60 days instead of 20 days), so there is an incentive to agree if they are reasonably convinced you'll eventually make service anyway. Also, you can recover the cost of service of process if they didn't agree and you prevail. So, it's usually a win-win, although you do occasionally run into folks who would rather hunker down and put you through that hoop.

You could tell that things were going to be interesting earlier in this thread:

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

That doesn't make any actual sense.

If you look again at the docket for this case, you'll notice that one of the first things that happened was:

https://www.courtlistener.com/docket/16929756/monster-v-ganeden-biotech-inc/

Mar 4, 2020

Summonses Electronically Issued as to defendants Ganeden Biotech Inc AND Kerry Luxembourg Sarl. CC to plaintiff via US Mail. (Attachments: # 1 Summons)(GT) (Entered: 03/04/2020)

You file the suit. The court issues a summons to you. It's up to you serve that summons, along with a copy of the complaint (and anything else required by the relevant local rules on international service), on the defendant. In the US, this is normally done by hiring an adult who is not connected with the suit, to deliver the summons to the defendant, and then provide a sworn statement they have done so - i.e. those folks noted above who charge $95 to do it. They do it for a living, and they are usually pretty good at it.

But, most of the time, you send that package by whatever method you'd like, along with a waiver of service that the defendant can return to you for filing with the court and which gives them additional time to answer.

And if you are having a particularly hard time effecting service by the usual methods, you can ask the court to allow alternate methods of service, such as some kind of reason to believe that a courier package or email sent to some address will inform the defendant (and not some intermediary like their lawyer) that they are being sued.

But whatever is meant by a "Notice of Service of Process" which was "sent to the Defendant's counsel" before a lawsuit was filed is anybody's guess.

For example, I represented a client who sued Bryan Adams (yes, that Bryan Adams) in this action:

https://www.courtlistener.com/docket/6087839/worldwide-media-inc-v-adams-communications-inc/

You'll notice that my client was in Florida, and Bryan Adams and his company are in Canada. So, we had two foreign defendants.

Now, one of the things about celebrities is that they are sort of in the business of making it difficult to reach them unless they are getting paid. So, on top of the hassle of foreign service (and a business office which actually denies its his when a server shows up), we had someone who was difficult to reach. But, that's what you hire professionals to do.

The court issued a similar order:


Oct 10, 2017

ENDORSED ORDER TO SHOW CAUSE why Plaintiff's Complaint should not be dismissed for failure to comply with Rule 4(m) of the Federal Rules of Civil Procedure. Plaintiff shall respond to this Order by October 12, 2017, by (1) filing proof of service indicating that Defendants were served within 90 days after the Complaint was filed, or (2) showing good cause for failing to comply with Rule 4(m). Signed by Judge Donald M. Middlebrooks on 10/10/2017. (bwn) (Entered: 10/10/2017)

And we explained the situation and the diligent efforts we were making:

Oct 10, 2017

RESPONSE TO ORDER TO SHOW CAUSE re 11 Order, by Worldwide Media, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Spielman, Darren) (Entered: 10/10/2017)


You can read that response here:

https://www.courtlistener.com/recap/gov.uscourts.flsd.509736.12.0.pdf

You'll also notice we filed that response the same day the court issued the order.

And the court's answer was "Okay, check back in January"


Oct 17, 2017

ENDORSED ORDER. Pursuant to Plaintiff's Response to Order to Show Cause (DE 12), Plaintiff must provide this Court with an update regarding the status of foreign service under the Hague Convention by January 16, 2018. Once service has been completed, the Parties may submit any motions to amend the scheduling order should any extensions of deadlines be required. Signed by Judge Donald M. Middlebrooks on 10/17/2017. (kcr) (Entered: 10/17/2017)

Now, there were other fun and games and the case didn't actually get served until March. But the point was that at every step of the process we could show that we were making diligent effort to get the case served by competent professionals we engaged, and that we weren't dragging our feet.

So, it could be that the plaintiff here has some interesting backstory on the efforts so far to proceed with this action.

 

[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.

 

[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):

 

[The Durfer]

it should fall back to fair market value for the domain. Should not go with the complaintants intent to steal the domain but to get a fair value. otherwise they are just robbing Rob. excuse my pun. Domaining is a mental stress game, society has yet to value mental stress the same as physical stress. We go thru more than people know holding domains anyway thus mental strain. Values need to be rearranged as to what we are really going thru and physical value. Just as much as court points out distress has a monetary value so does domaining whether it goes to a negative court situation or not. ty.

 

[Samer]

Sorry to hear that, Rob.

although i value any name with Ns’ at ZERO

I know they still carry value. i support you

 

[Silentptnr]

My thoughts on this -

1.) When a buyer counters an asking price, that asking price is no longer valid.

2.) It should not be the UDRP judge's decision to determine what is "fair market value". A registrant either has the right to sell a domain of not. If they have the right to sell it, the asking price is their prerogative.

Brad

Exactly

 

[Kai W.]

One of the main reasons I NEVER quote prices until I know the person's willingness to engage in a voluntary and forceless negotiation is this sentence...

You are wise and experienced. I think this case raises our alarm: Excluding legal risks is far more important than sales.

 

[Keith]

It looked like 2 different offers.

See here:

Show attachment 145447

There was an offer thread that started on September 18, 2019.

There was another other offer thread started on October 23, 2019.

How am I supposed to know that these are the same person? I can't. It is a black box.

So, before the $4200 buyer closed, I get another inquiry. I assume it is a new bidder and that the old bidder was not yet ready to complete their transaction.

In either case, my offer was in the right range. This was no moonshot.

The problem is that Domain Agents is a blackbox and offers no assistance in managing the dialog to get to a funded transaction. That is why I mostly ignore Domain Agents.

Do what I do and never list a domain for sale, anywhere. And these agent types aren’t worth a response.

Serious buyers will find you and those buyers are the only type that matter!

 

[Rob Monster]

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.

 

[Keith]

I should add this.

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

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

Not to side track the discussion but this is a huge issue for me. Netsol does the same thing with valuable domains. Seems like an abuse of power.

To be fair, all expired domains should follow the same process. If you want it, let it delete and compete/pay the fair market value.

 

[karmaco]

I don’t think anybody should complain about Epiks choices with their expired stream. Nobody complains about the virtual monopoly of expiring domain monster GoDaddy. I mean talk about unfair that almost everything has to pass through their stream. I am sure they grab some gems if they don’t let their biggest clients have at it. Rigged system for the big players with big wallets.

 

[capybara]

Was this stated previously as a fact, or...?

I'm just jumping in to this thread, so forgive me for asking where the source of acquisition came from?

Welcome back!

 

[HotKey]

How Monster acquired the domain is a different topic to the controversial, disgusting UDRP ruling. While I agree it seems somewhat a conflict of interest, it should be discussed on a separate thread, yes? It really could be something for us to look at, and something to be fixed or further clarified.

 

[Rob Monster]

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.

 

[Rob Monster]

Godaddy does what all day? Their domains go through a streamlined process no matter how much value is there.

Please show us emails from Mike where he said he didn’t intend to drop BC30. Otherwise admit that Epik used their position as registrar to take ownership of an expired domain, with the intent to profit.

What part of Snapnames (part of Web.com) business model do you fail to grasp?

Registrars send their expiry streams to Snapnames and get ~75% of the proceeds.

What Epik does is a bit more noble:

1. We offer a grace period.

2. We offer an extended grace period if a customer notifies us they are having an issue, i.e. we'll hold a domain in escrow as a layaway on good faith.

3. We offer interest-free loans for people who are at risk of losing their domains.

4. We do from time to warehouse names rather than send to the expiry stream and provide a 1 year window to recover it for $199 if we still have it.

As for renewal notices, it is all managed as part of our ICANN-approved expired domains policy which is transparently disclose dhere:

https://epik.com/support/faq/expired-registration-recovery-policy/

Which is linked from our published terms of service:

https://www.epik.com/terms.php

So, why don't you go waste someone else's time in a thread of your own.

 

[Keith]

deserve a gold star bad faith expired auctions.
i’ll put it in number format;

Godaddy expired auctions furthest thing from “fair” treat customers, for you to use as an example means nothing;

1) should be Illegal under table relationship with HugeDomains.... what was their # again?

2) Only granting their API to “special” clients
Doesnt Rob make his available to all? Rob didnt u just make the Epik Escrow API avail 2?

3) Charge yearly fees for auctions because well, they can. They’re a monopoly. oh and another for reserve. Nice “faith” Keith!

need i go on? Godaddy system flawed in highest order, why cite GD expired auctions
“good faith” for rob to follow? lol put him out of business, if he follows Godaddy way, ANY way.

I see what you are getting at but this is common amongst industry registrars.

What Epik and Netsol do is not ok.

 

[Ategy]

Thousands of domains delete from godaddy on a daily basis. They give customers first right to purchase expired domains. If no customers want to buy, they get deleted.

How do you know? More importantly ..That's not even the point. What matters is that they would be allowed to if they wanted to. Even more importantly .. they TAKE all our expired domains and try to sell them at a profit that they keep 100%! How is that any different from keeping the domain? Keeping the profit isn't any different from keeping the domain. In fact now somebody else owns the domain and the original owner has no further grace period to get it back, so in a way it's worse.

According to ExpiredDomains.net (Deleted Domains > past 24 hours) yields 145,887 results. To say this happens to 100,000 domains every day is a bit of a stretch.

I don't know what the exact number is. GoDaddy auctions a little over 50,000 expired domains every day (I should know, I go through the list every day for my lists at NameCult .. lol). And I've heard a few times that they represent about half of all domains. So with all the other auction platforms combined it's likely not far from 100k domains.

But again, it's not really the point. The point is that 100% of expired domains that go to expired auctions are "TAKEN" from the original domainer. The method and visuals might be different and different here .. but the end result is the same as those ~100,000 other domains every day .. and more importantly .. no existing rules were broken!

I'm not saying @Keith is wrong for not liking what happened .. but this personal attack is 100% inappropriate because nothing was done outside of the rules .. his attack should be on ICANN and the existing rules. I'm fine with that .. because Rob has done nothing wrong here. In fact .. with NameLiquidate he's set it up so original domain owners can get 91% of revenues from their expired domains .. GoDaddy takes 50,000 expired domains A DAY away from the original owners and gives them 0%! Yet somehow you guys feel it's appropriate to go off-topic and attack Epik as opposed to GoDaddy or more importantly the actual ICANN rules ??? That's 100% wrong!

In regards to this turning into a personal attack that should be directed at the entire industry, specifically on ICANN, I agree the focus could be better directed elsewhere.

I'm glad you're starting to see the light .. lol .. Because that's all I'm saying .. that this specific and personal attack against Rob is unjustified as long as he's playing by the rules and not doing anything that ultimately ends up being any different from hundreds of other registrars.

 

[nothere]

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.

 

[DNabc]

I was not aware of this until today, thanks to Andrew Allemann. Good luck Rob, not just knowing I'm rooting for you but because you are on the right side

 

[marijuanadomain]

It is his rights to fight to protect his property...let no one "steals" your property.
Way to go!!! Go get them!!

 

[jberryhill]

Does anybody have any links to the court case?

https://www.courtlistener.com/docket/16929756/monster-v-ganeden-biotech-inc/

There is no indication thus far in the docket that the suit has been served on either defendant.

So, this case is days away from an order to show cause why it should not be dismissed for lack of prosecution, give or take a few.

This is the relevant rule of the Federal Rules of Civil Procedure:

https://www.law.cornell.edu/rules/frcp/rule_4

(m) Time Limit for Service. If a defendant is not served within 90 days after the complaint is filed, the court—on motion or on its own after notice to the plaintiff—must dismiss the action without prejudice against that defendant or order that service be made within a specified time. But if the plaintiff shows good cause for the failure, the court must extend the time for service for an appropriate period. This subdivision (m) does not apply to service in a foreign country under Rule 4(f), 4(h)(2), or 4(j)(1), or to service of a notice under Rule 71.1(d)(3)(A).

---

The suit was filed on March 4. So, ninety days from March 4 is June 2, and there is no return of service or any other indication on the docket that the plaintiff has taken any steps toward serving the defendants.

One of the defendants is a US company in Ohio, and the other defendant is a Luxembourg company.

Service of process on international defendants is not cheap or easy, and it is one of the reasons why you won't get a lawyer to work for free on a lawsuit against a defendant in Luxembourg. Service of process in the US can be enough of a nuisance sometimes, but complying with the Hague Convention on Service of Process, or with the applicable local law in a foreign country, is specialized work that is best done by professional service organizations who do just that.

There is no reason not to have served the Ohio defendant by now, and if the plaintiff has not made any efforts toward starting the procedure with the Luxembourg defendant, this action will most likely be dismissed. Now, if, for some reason, service has been attempted or is being frustrated, the plaintiff will be given an opportunity to explain whatever those circumstances might be. That is why the usual course for a case in this procedural condition is for the judge to first order the plaintiff to explain why the case hasn't gone anywhere, before ordering the case dismissed or granting an extension of time.

 

[jberryhill]

Rob has until August 13 to explain why he has apparently done nothing since filing the suit, or the case will be dismissed. Once the case is dismissed, the registrar is obligated to transfer the domain name to the Complainant.