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.

 

[Rob Monster]

We filed on time.

Case number is 2:20-CV-357-RSL

Judge Robert Lasnik presiding in the United States District Court for the Western District of Washington

Many thanks to @patents and @David Michaels for their assistance. Class acts. Blessings to both of them.

 

[David Michaels]

Judge Robert Lasnik is an experienced judge with 43 trademark cases in the past decade. Six are currently pending, including the BC30 .com case.

Judge Lasnik has presided over three other ACPA cases:

1. A default judgment regarding BungeChicago .com - cybersquatting
2. A settlement regarding Happy Halloween's screams .com hijacking, and
3. A settlement regarding Domain Market's LakesGas .com hijacking.

No documents were filed regarding the settlement amounts for the hijacking cases.

Judge Lasnik is has awarded a full range of attorney's fees and huge amounts of damages in non-trademark cases.

Good luck!

 

[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!!

 

[Cannuck]

I have also just tuned into this very informative thread. Educating oneself in trademark law and investment in intellectual property is a key component in the development as a domainer.

Admittedly, I have been naive, having sold several names for considerably less than their true market value. The experience you share is golden for those who are serious about the industry. I will be following this thread with keen interest in order to stay abreast of your progress moving forward. Thank you for posting, good luck in your challenge.

 

[Silentptnr]

In this case, it seems like the decision was a bad one. Hopefully this action will result in a correct decision. Please keep us posted @Rob Monster . Let me know if I can help here in L.A..

 

[Reddstagg]

I think we as a collective society have allowed Trademarks to become nonsensical. Even the word nonsensical has had it's hyphen removed!!

If a word is in a widely accepted dictionary (choose whichever one you like but at least chose one) then it should be impossible to get a trademark on it. We should just accept that it is a word that has been accepted into the common language and as such it must be perceived as a word that doesn't have a trademark.

The world and society has evolved and moved on but it seems that since the year 1266 (when bakers were required by law to use a distinctive mark on their bread) we have created our own problems and instead of a system designed to make life easier we have mis-used the same system to make life even more complicated.

Imagine if three different companies started in business today in three different towns on three different continents and they chose a similar name, for example:

www. there-there there.com
www. their-their-their.com
www .theyre-theyre-theyre.com

Who in their/theyre/there right mind would automatically presume that it was a trademark infringement and would order one or both companies to cease and desist and handover the domain name?

We all need to carry on regardless and fight the good fight as and when required to do so but we must not be intimidated by corporate dollars and resist the urge to register domain names. In the end, if nothing changes for the better we will just all give up and take up knitting. Do we have big enough balls? Wool that is!!!

 

[Chris Hydrick]

In this case, it seems like the decision was a bad one.

If you are referring to Rob's derogatory remarks (and threats) about the UDRP and the Center, then I agree!

....

As for an update on BC30.com.

It's been nearly 5 months since the panel ordered the domain transferred to the complainant.

BC30.com still redirects to an epik make offer landing page. https://archive.li/DRQPZ

BC30.com still has a make minimum offer via GD search. https://archive.li/eewqD

WHOIS appears to have updated on: 2020-05-27T08:20:03Z
Likely a renewal to: 2021-06-02T19:03:22Z

Does anybody have any links to the court case?

 

[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]

Aaaaaand here it is:

 

[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.

 

[Keith]

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.

@Rob Monster

 

[sharfab]

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

 

[Jimmysun]

So you plan to fight the decision or not?

 

[nothere]

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

Easy for you to say, it costs money and would be coming out of Rob's pocket.

 

[Rob Monster]

The defendant's counsel indicated a desire to settle. We have been exploring that request in good faith. In the absence of an acceptable settlement, the case proceeds.

Timing-wise, during COVID and Seattle riots, the Seattle courts were not moving quickly so there was no urgency. Now that the courts are back to work, we plan to move to meet the court's deadlines.

Just FYI, the US service of process is trivial. For the non-US defendant in the case, there are additional costs and fees for service under the Hague Convention, mainly related to translation.

 

[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]

The defendant's counsel indicated a desire to settle. We have been exploring that request in good faith. In the absence of an acceptable settlement, the case proceeds.

The court doesn't have to accept that unilateral explanation as a reason to keep this case on its docket indefinitely. That's why it is typically a better route to get agreement to waive process and then stipulate to an extended time for an answer or motion by the other side.

This is going on four months, and the court is going to want to have some idea of when you expect to shit or get off the pot. It had better be more than "We traded a couple of vague emails and ultimatums a while back which I'm optimistically interpreting."

But, hey, I've never seen anyone try calling the court a "corporate shill who is doing the bidding of their Illuminati masters", so I don't know how that one works out. You spins the wheel, you takes your chances.

 

[sharfab]

Easy for you to say, it costs money and would be coming out of Rob's pocket.

Stand for something or Fall for anything!

 

[nothere]

they'd be dumb not to settle, it's not like a few $k will make them miss lunch or anything. And they made the point. But then having money means that you can do whatever you like

 

[jberryhill]

they'd be dumb not to settle

There's no reason for them to settle. The current dynamic is that if they do nothing, they get the domain name. If the case has not been served on them, then it's Rob who has to go to court to argue to keep the case alive.

On the other side, if the point of this litigation was to do things like:

- Challenge WIPO's right to exist in the court of public opinion -- this is in progress and I appreciate the support to keep this thread prominent.

or

then reaching a settlement with the complainant in this UDRP case doesn't get anywhere near those things.

You litigate for two reasons: (1) to prove a point and make some law, or (2) to remedy a problem which the law is capable of addressing.

If you are in the business of making points, then you don't settle. For example, if the inter-racial couple who sued the State of Virginia in Loving v. Virginia had settled with the State of Virginia on the basis of "Okay, we'll let you two get married", that would have solved their immediate problem, but would do nothing for anyone else.

But there is no settlement here which is going to affect "WIPO's right to exist". That's kind of a tall order anyway since WIPO is an organization that was created by a treaty among quite a large number of countries, including the US, to administer certain tasks under that treaty. In the larger scheme of things, the UDRP is a teeny-tiny part of what WIPO does, and is a small money-losing part of their otherwise considerable budget from the Patent Cooperation Treaty chunk of their operations.

As for the second goal above, we are approaching seven months into 2020, and I don't see much evidence of "the industry" fighting back against WIPO, nor is there any imminent threat to "WIPO's right to exist". Part of the reason the UDRP exists was to get registrars out of the business of adjudicating trademark claims, and to offload potentially liability for those sorts of decisions.

So, in any event, settling with the other side certainly doesn't advance any stated goal of the litigation. If one were advising a well-funded company on the best approach to dealing with a pro se litigator, then the best advice, absent service having been made, is to let that pro se litigator flounder about and see if the court dismisses the case on its own.

 

[nothere]

If one were advising a well-funded company on the best approach to dealing with a pro se litigator, then the best advice, absent service having been made, is to let that pro se litigator flounder about and see if the court dismisses the case on its own.

Sure, but he can go from a floundering pro se litigator into one with a lawyer, even though he is dragging his feet and that seems unlikely. Either way, a non-zero chance exists that they could lose the name. Secure the name forever with a few $k and be done.

As for sending messages: They make probiotics, they are not a tech company like IBM (but then they might decide to send a message, as they have many trademarks)

 

[jberryhill]

Timing-wise, during COVID and Seattle riots, the Seattle courts were not moving quickly

...which doesn't have a lot to do with the affirmative duty of a plaintiff under FRCP Rule 4 to serve the defendants who are in (checks notes) suburban Cleveland and Luxembourg. Whether the courts were "moving quickly" doesn't have anything to do with whether a plaintiff can serve a defendant in Ohio, and electronically file the return of the summons in order to avoid the predictable (as was predicted above in this thread) and timely Order to Show Cause.

https://www.wawd.uscourts.gov/node/614

The court’s electronic filing system continues to be available 24/7 and may be used by anyone who has registered with the court. Check individual judges' pages for courtesy copy requirements during the COVID-19 crisis.

 

[topdom]

Biggest problem with UDRP seems to be that they ignore evidence favorable to respondents. So you are attacked, and you need to defend by disproving each of their attack arguments. .. The complainant says nonsense, and you need to prove why it is nonsense. Maybe this needs to be done for each sentence. Otherwise they pick complainats' sentences, and claim we didn't defend against those claims... For example mentioning generic domains you own may not help, because the judge is corrupt. They don't put our arguments on files as they are. They handpick stuff to support their decision.

 

[topdom]

I'm in udrp right now for ibmkeyword.com . keyword has nothing to do with computers. I will claim ibm is just 3 letters, which can be shared by many companies, so it is almost like a generic word...I don't want to hijack this thread so this is all I say. In a fair case I would win, but I assume I have 50 percent chance of winning because of corruption.