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Complainant wins arbitration only to let the domain drop

Labeled as opinion in Legal Discussion started by legendarynames, Aug 21, 2019.

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  1. legendarynames

    legendarynames Upgraded Member Gold Account

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    In more than one occasion, I've had complainants dispute a ccTLD domain using a UDRP-like arbitration system, only to let it expire in the sequence. In one specific occasion, I sued back the complainant to prevent the transfer and they responded, but the case had to be dismissed due to a legal technicality and they got the domain.

    It baffles me that complainants would go to such extents and later not renew the name. To be more clear, from the moment they took control until the day the domains expired, they didn't even bother changing the nameservers, so the domains continued to display my own PPC ads.

    I'm talking about different complainants, in a span of several years. The last case was today, and I re-registered the expired name (the one I had to sue)

    While I know exactly why they behave that way - unscrupulous/lazy/negligent IP lawyers that are paid by the hour to "monitor" and "defend" the intellectual property on behalf of their clients, which are mostly unaware of what they're doing, or if their money is being well spent.

    My question to NamePros is: assuming one of these lowlifes will come again for the domain, do you think the fact they left it expire is a strong argument in my favor?
     
    Last edited: Aug 21, 2019
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  2. Don Gondon

    Don Gondon Established Member

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    With UDRP, a significant portion of all cases are about names, which have no use to the complainant. The purpose is to stop others from using these names. Go to UDRPSearch.com and try Google – do you think Google needed these domains? No, Google needed to stop the trademark infringement.

    If I were a legitimate trademark owner and saw you registering a domain with my trademark second time after losing it through UDRP, I would sue you. Be careful walking down that road, especially if you mean CC domains of a country where you live. You may end getting some kind of local fame which will hurt your professional and/or business life in the future.

    As for nameservers unchanged and ads continue being served, it may be due to the lack of technical knowledge – they may believe ads is a registrar thing or something.

    Of course it is also possible that you are not really infringing any trademarks and that arbitration process is seriously biased towards the complainants, that is why you keep losing, but... it is exactly your post and the questions you ask which make this possibility look unlikely to me.
     
  3. legendarynames

    legendarynames Upgraded Member Gold Account

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    Well that's exactly the point, and it should come to no surprise, specially in a domainer's forum, that the arbitration process is biased towards a complainant. In this last case which I mentioned, the panelist explicitly used the fact that "I have many unused domains" as evidence of bad faith.

    Also, if you re-read my post, you'll see that I sued the complainant in the courts, which in itself should be a strong indicator that the complainant had no rights to the domain.

    This doesn't add up. The complainant is a IP Law firm with ample knowledge on the technicality of domains. They simply don't care changing nameservers because, as I said, they're unscrupulous lawyers and their interest lies in finding frivolous cases where they can charge their clients for a dispute. I'm pretty sure their clients, some of which are big companies, don't follow closely what they're doing.
     
  4. Don Gondon

    Don Gondon Established Member

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    That is certainly against the common sense, but it may be not against the local rules of arbitration process or even local laws. Some CC extensions are just not meant for domaining.
    No, its merely the indicator you are willing to legally fight for the domain. Unless you've already won in court, but nowhere in your post provides this information.
    I am in software development and I see tons of people and organizations in this industry who have no clue about some very basic things. Sometimes they completely lack competence, sometimes internal bureaucracy is in the way of even a most simple action. Just because some business has a technical label does mean nothing.

    Your version can be true as well – they just don't care – but without knowing the country, the rules, the names, the complainants, the trademarks behind their complaints, its not possible to provide any helpful feedback. If your domains in question are generic and not infringing anything, then I hope you manage to win this.
     
  5. legendarynames

    legendarynames Upgraded Member Gold Account

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    Domain name was equalita.com.br. I hand registered it as a brandable domain related to equilibrium, equality. 'Equalità' is actually an Italian word with such meaning.

    The Complainant was a law firm representing Qualita, a large company with trademarks for that term in the food industry. They argued that I had merely added a letter to their name, which doesn't make it sufficiently different. Furthermore, they argued that the letter 'e' was associated with an online presence, like 'email' or 'eSports'.

    The funny thing about this biased arbitration system is that the Brazilian registry itself auctions expired domains before making them generally available for new registrations.
     
    Last edited: Aug 22, 2019
  6. Kpett

    Kpett Established Member

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    I can see how the lawyers for Qualita would begin a UDRP over eQualita (purposely capitalized on the 'Q')- whether it is a .com or .com.br or whatever. They let is expire because they never wanted to register the name ... they just don't want others using it. If you have re-registered the name, then you very well could expect another UDRP.
     
  7. MapleDots

    MapleDots Domain Properties 2002 - 2019 VIP

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    Not only that but you could even get hauled into a real court of law for trademark infringement and be hit with a sizeable judgement against you.

    They are a targeted end user, they are not interested in the domain, there is no money to be made.

    OP, Drop it, move on and focus on a domain you can make money on.
     
  8. legendarynames

    legendarynames Upgraded Member Gold Account

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    And if they do so they'll be very welcomed. I will make sure however the CEO of Qualita is notified of how well their money is being spent on avoidable legal disputes. A $10 domain renewal versus thousands of dollars in lawyer and arbitration fees.
     
  9. legendarynames

    legendarynames Upgraded Member Gold Account

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    It doesn't work like that in Brazil, there's no equivalent to the ACPA act to make such claim.

    I understand your point but this is not about money only. I don't believe they have rights to my property and will not let them have it, or at least will make it incredibly painful for them.
     
  10. Mister Funsky

    Mister Funsky Top Member VIP

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    Without a doubt!
     
  11. BaileyUK

    BaileyUK Top Member VIP

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    As mentioned the complainant was merely protecting his trademark and of course sending a message to any others that may follow the same course. It's understandable that they themselves didn't want to use the domain or keep hold of it. They don't want people diluting their trademark so why do it to themselves
     
    Last edited: Aug 22, 2019
  12. MapleDots

    MapleDots Domain Properties 2002 - 2019 VIP

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    Not only that, why stop at eQualita, they could also buy bQualita, or cQualita.
    Then lets start adding words

    Of course, I would drop it too if I won the case, I would not renew it year after year just because someone was trying to use my trademark. They won one case already so if the same person registers the domain a second time they have a better case because it's twice they have infringed.

    The OP seems to think he has a stronger case because the company dropped the domain.
    Personally I think the company has a stronger case because the OP is making the same trademark offense a second time.

    I used to run a multi million dollar corporation and if I was still there the next thing I would do is sue the defendant to set an example to the next guy trying to sell or use cQualita or dQualita.

    My advice to the OP is to be careful.
     
  13. legendarynames

    legendarynames Upgraded Member Gold Account

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    I respect your opinion and I'm in the forum to learn and gather different points of view. However, I can't say I'm not surprised to see such a strong opinion in favor of the complainant. I thought domainers would be more receptive to my argument, but oh well.

    I have not changed my mind. In my opinion this case is blatantly unfair and a demonstration of arbitration bias and complainant laziness/carelessness. We are not talking about Facebook or Google which have zillions of useless typos and it would make no sense to keep them. Qualita, despite being a big local brand, is recognized by their products rather than the brand itself. No cybersquatter would have interest in a typo of Qualita, which would make no sense and have no traffic at all.

    I'm not afraid of them in any way and might well set an example by publishing what happened in the domain itself.
     
  14. legendarynames

    legendarynames Upgraded Member Gold Account

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    Let's look at it the other way around, why no cybersquatter ever registred bQualita, or cQualita, or added more words? Because these are useless domains.

    And why eQualita is different? Because it has a different meaning, which I explained before. It's not eQualita, but EQUALITA, meaning equality. The additional letter makes a lot of difference in this case as the composition is a dictionary word.
     
  15. MapleDots

    MapleDots Domain Properties 2002 - 2019 VIP

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    You lost the case so you see they did not buy your argument.

    I do see your point of view, but if this company has deep pockets you might find yourself in a bit of trouble the second time around.

    My biggest question is.... whatever use you have planned is the profit potential bigger than the risk of a lawsuit. Can you afford a lawsuit if it happens?

    Lots to consider in this case and you have to be prepared for consequences should they occur.
     
  16. legendarynames

    legendarynames Upgraded Member Gold Account

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    True, but meaningless to me, as some panelists are notorious exactly due to their infamous decisions and biased line of thought. There are whole websites dedicated to exposing and shaming such "professionals", as everybody here is well aware of. So the fact that I lost the arbitration has zero weight against my argument.

    I don't act for profit in this case, and the world would be damned if we only acted for money in every circumstance. This case is about principles. Also, my potential loss is small and I'm fairly confident it'll be a cold day in hell before they can take a dime from my pockets based on my registration of equalita.com.br.
     
  17. MapleDots

    MapleDots Domain Properties 2002 - 2019 VIP

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    Any loss will be used against you in the next case, that is how the legal system works.


    You can't feed your family on principles.


    I admire your determination and in my early years I would have done the same.
    Today experience tells me it's not worth it, especially on a domain that has no great profit potential.

    Focus the same energy and determination on a new domain/project and chances are you will get a way bigger payday.

    Either way, I wish you lots of luck (y)
     
  18. saintpro

    saintpro Established Member

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    I think you should have your own trademark on it. That's what I hear from domainers... if you have a valuable name have your own trademark. Maybe you should have done that or should do if you want to face them again.

    Can having a trademark in your home country or wherever you can apply to save you from UDRP or at least give a strong point that you have the right to hold the domain or sell whether there are multiple trademarks or one?
     
  19. legendarynames

    legendarynames Upgraded Member Gold Account

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    It's a dangerous quote you're using there. People can use it to justify a lot of nasty behaviors, as History has shown us so many times.

    Also, I never needed to sacrifice principles to feed my family, and it's not likely to happen in the present case, but if it ever came to that, surely family comes first.

    I'm not in my early years anymore, but my determination is as good as if I were 20. :)
     
  20. legendarynames

    legendarynames Upgraded Member Gold Account

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    Likely possible but the domain itself isn't so valuable so not worth the trouble. Also it's 99% certain that Qualita would oppose the trademark. Finally, a trademark is only good if you use it in a real business, and I'm a domainer, I don't want to develop equalita.com.br.
     
  21. MapleDots

    MapleDots Domain Properties 2002 - 2019 VIP

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    I was referring only to your case, not in general.

    I was referring to my early years in domaining and the mistakes I made even though experienced domainers were giving me advice on how not to make those mistakes.

    I lost a case big time, and I should have listened, the company took me to the cleaners in legal fees.
    I stood on principle when I should have let it go, it was a lesson learned.

    Today I try to share some of that accumulated wisdom, which I wish I could say was my own, but is really an accumulation of dialogue with domainers since 2002.
     
    Last edited: Aug 22, 2019
  22. legendarynames

    legendarynames Upgraded Member Gold Account

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    I understand your pain and thanks for sharing your experience, but the legal environment in Brazil regarding domains is very different than in the US and it'd be impossible for such an outcome there if I'm not actively using the domain to dilute/harm their brand.
     
  23. Crypto King

    Crypto King Cola.com - iyaz.com - Peculium.com - BVMI.com VIP

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    I wouldn't re-register. If they do another UDRP, in my opinion they would win easily as it is the exact same domain and the exact same registrant! The panel would have no choice but to grant in the favor of the complainant. I think you would be wasting your time and money.
     
  24. legendarynames

    legendarynames Upgraded Member Gold Account

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    Point taken, but I wouldn't waste money as I'd write my own defense.

    Same domain and same registrant, but different context, as the complainant clearly didn't want the domain, and despite opinions in the contrary, I think it counts in my favor.

    And as I said before, I'll surely threaten the law firm into taking this case to their client's attention. If you were the CEO of Qualita, would you be happy to know your lawyers are disputing the name for the second time because they avoided a $10 fee? Unlike some people have mentioned here before, equalita.com.br is probably the only 'typo' they would ever have to go after, so the argument that it makes no sense to keep domains they won't be using is broken.
     
  25. Crypto King

    Crypto King Cola.com - iyaz.com - Peculium.com - BVMI.com VIP

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    Understood. If you do go ahead let us know. Would be interested in seeing the result.
     

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