NamesCon2020

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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    If by goint ahead you mean re-registering, that's already done.

    Whether I'll take additional steps prior to a new arbitration, I haven't decided yet.
     
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  2. topdom

    topdom Established Member

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    They will forget you are the same person. Or you can modify whois. Or make BIN price low enough.
    Worst case scenario: They won't care whether someone owns it or not.

    I received an informal complaint on a new tld domain. I defended it harshly unnecessarily, and they lost interest. I'm thinking of telling them that I had bad faith (although I don't know that company at all) and make BIN below 1K, so just before they file their complaint they will realize direct purchase becomes cheaper.

    In another case, I lied , and I said I will build a site. Unfortunately they respected my "good intentions".

    In another case I didn't put a BIN, and they filed a complaint and won, and it was total nonsense. Probably they arranged their corrupt UDRP lawyer in advance.

    In one more case I received an informal complaitnt together with 100 USD offer. My counteroffer was 500. They didn't counter again. I dropped it. Someone else registered and then dropped. I saw it was available. I told them it become available, and they immediately registered it and didn't thank me. It was for POTUS' company. Since I support the POTUS, (but not everything he says)
    I allowed "him" to get it. I suspect those lawyers scammed their boss, while I got nothing out of this, but I had no way of getting something anyway.
     
    Last edited: Aug 24, 2019
  3. Jv1999

    Jv1999 Spamming Exo: Dark Merc of the Exo-Tower VIP

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    Could be a good argument for adverse possession if it were a land / personal property case...

    but with TM, maybe it shows they aren't controlling their brand as well as they could've...
     
  4. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    You mentioned something about PPC ads before. Were you (or are you) running ads on this Equalita name?

    If you are, then depending on the content of the ads, I might be inclined to side with the complainant on this one.
     
  5. legendarynames

    legendarynames Upgraded Member Gold Account

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    Yes I was before, because PPC ads were exhibited by default along a for sale banner under my Bodis setup, but not anymore after re-registration. As I said, Qualita isn't as nearly as famous as the products they market, so PPC ads would hardly be targeted to them. The domain had (and has) virtually zero traffic.

    I can't say for sure but I think I didn't even know Qualita before the arbitration, or if I did it was deep in my subconscious.
     
  6. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    I agree that it's a bit of a trap, but I'm sure you can see how the existence of ads promoting food (or possibly even redirecting to their site) puts them in an ethically superior position.

    These UDRP cases are all about proving the bad intent of the current domain owner. So in looking at the facts, we have:
    • Domainer registers Equalita
    • Domainer displays PPC ads on domain
    • PPC ads promote items currently trademarked under the Qualita name
    • Domain owner profits if and when site visitors click on these ads
    Whether the site gets traffic or not doesn't factor in. Your knowledge of the existence of their TM also doesn't factor in. Simple fact is that you took an action that either could have or did financially benefit you because of the complainant's TM. That's bad faith right there.

    Believe me, I know it wasn't your intent. But on the flip side, you can't be upset that a company would want to be aggressive in slapping down that kind of activity.
     
  7. legendarynames

    legendarynames Upgraded Member Gold Account

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    I thank you for your comment and common sense, but I don't entirely agree. Whether I knew or not about Qualita is entirely the point, as I cannot possibly act in bad faith without prior knowledge of a TM. Multiple UDRP decisions have explored this fact, some of them giving credit to the Respondent when he/she made a strong case of not knowing about the Complainant's existing TM - whether because the TM wasn't famous, was geographically distant from the Respondent, etc.

    As for a company wanting to be aggressive in slapping down such names, that's their right, as much as is my right to defend what I believe to be my property. And the fact that they let the domain expire is revealing to me in the sense that the domains they go for isn't decided or monitored by the company - their lawyers are happy when they can fill a dispute and get paid their fees. They're only representing their own interests.

    Maybe I should propose a partnership with them, a 20% cut on every disputing cycle.
     
    Last edited: Aug 28, 2019
  8. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    Admittedly I'm not familiar enough with UDRPs to know about other similar cases. But I'm a little surprised to hear that people have been let off the hook based solely on their own ignorance. I'd be interested in seeing some examples. Did they also display ads on their sites? How similar were the names?

    If you get to keep the name based purely on ignorance of their brand and TM, where does the line get drawn? Next week you could purchase (hypothetically of course) AppleCar.com and put up ads. When Apple opens a case against you, you could claim you had no idea they owned a TM for cars; you thought their brand was limited to computers.

    You live in Brazil. Qualita is based in Brazil. Seems reasonable that you would/could know their brand.

    Additionally, your own history could have been a factor. If you've been involved in (and lost) other UDRP cases under similar circumstances, that could have worked against you in this decision.
     
  9. legendarynames

    legendarynames Upgraded Member Gold Account

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    My defense was never based on my supposed ignorance of their TM. That was never brought up. My defense was based on the fact that the addition of one letter, in this case, gave a different meaning to the term. Equalita is essentially different than Bqualita, or Quailta. These are typos. Equalita is not.

    Also, I never said I live in Brazil. Do you only collect names of the country you live?

    I understand there are many nuances here and an honest panelist could have still sided with the Complainant using strong arguments, but the one panelist which wrote this decision was more biased than Fox&Friends talking about Trump.
     
  10. legendarynames

    legendarynames Upgraded Member Gold Account

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    If Apple has no TM for cars, then they have no rights. End of story.
    If Apple has a TM for cars, then still win because they are hugely famous which gives their TM extra protection

    If company Tangerine with a trademark for cars registered in Andorra in 1999 with little to no use in the last 20 years suddenly gets interested in taking over Tangerine.com because there's a picture of a car in the bottom left corner, then there's where you draw the line.
     
  11. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    Apologies, I thought you said in an earlier post that you lived in Brazil.

    I understand the argument that your name is a different word entirely. But the panelists would be trying to determine if the average consumer could potentially be confused into thinking your name represents the Qualita brand. Since your name contains Qualita, preceeded by an E, I think there's a pretty good argument there that your name could be confused with their brand.
     
  12. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    That would certainly be an unwinnable case! Also a very very different situation than what you're discussing here.
     
  13. legendarynames

    legendarynames Upgraded Member Gold Account

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    Certainly it is but you asked "where do we draw the line" as if it wasn't possible to draw a line balancing the rights of TM owners and domain owners. My made up example was just one where a line can be draw, but there are many others. A TM is NOT an absolute value and a TM without use is of no value. Otherwise we'll literally be allowing people to own words in the dictionary.
     
  14. Joe Nichols

    Joe Nichols Common sense consultant VIP

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    Yeah for sure. I just figured we'd keep the convo focused on your situation. :)
     

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