Dan.com

question Could there be an LLL acronym domain as TM?

Namecheap
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I have received an email from my registrar about an LLL.co acronym domain, one big multi billionairy company demanded to give them a domain, that this is their TM, although this is a common acronym. Do they have the right to do so? Domain parked on for sale landing page with high xxx price. They threaten to sue, although they could to buy for xxx than spend even more on a services of lawyers:zippermouth:
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI)
DKY.com
Case No. D2015-1757
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1757

The Respondent is in the business of monetizing "generic" and three-letter domain names. As submitted by the Respondent, a number of previous panels have found that as long as this business is not infringing on a complainant's rights in a mark, the Policy allows registration and use of domain names for this purpose.


Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc.
INW.com
WIPO Case No. D2012-0454
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-0454

The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.


R.V. Kuhns & Associates, Inc. v. Gregory Ricks
RVK.com
WIPO Case No. D2014-2041
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-2041

Three-letter domain names are well known to have particular value. They have often been the subject of domain name sales at substantial prices (a fact for which Respondent provided evidence in the Annexes to his Response). As long as Respondent did not register the disputed domain name in bad faith or in an attempt to trade on the goodwill associated with Complainant's mark (as discussed below), his contention is plausible that he has frequently engaged in the purchase and/or sale of three-letter domain names as part of his business and considers the acquisition of such domain names to be a legitimate enterprise.


PwC Business Trust v. Ultimate Search
PWC.com
WIPO Case No: D2002-0087
http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0087.html

The letters PWC, as the evidence shows clearly, could be attributable to the Public Work Center, Personal Water Craft, Pratt & Whitney Canada, and no doubt to many other identifiable people or matters. This inherent lack of distinctiveness is what undermines the Complainant's attempts to have the Panel regard mere registration of PWC.com by the Respondent as self evident bad faith.


Braunschweiger Maschinenanstalt AG v. SearchMachine
BMA.com
WIPO Case No. D2011-1794
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1794

In John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 (the domain name <financialreview.com>), the majority of the panel held that there was no evidence that the first respondent who was a dealer in generic names in the United States, knew or ought to have known about a financial newspaper in Australia operating under the relatively descriptive name “Financial Review”. See also Richard L. Kane v. Nick Devine, WIPO Case No. D2001-1028.


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What gets missed in these discussions, despite years now of pointing this out, is that as noted by another poster upthread, there are a lot of facts that go into these things to decide the outcome, and it is not simply a matter of "three letter trademark vs. three letter domain".

Some trademarks are more well-known than others. If we are talking about things like IBM, BBC, VW, HSBC or other instantly-recognizable, famous and well-known marks, then the domain registrant is probably not going to do so well.

Another consideration is how well known the three letter combination might be, relative to the trademark.

In the recent case of GNP.com, the question boils down to asking whether the letters "GNP" make you think of:

(a) a Mexican insurance company, or

(b) Gross National Product.


Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton
GNP.com
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136

The Panel considers a domain name comprising a three-letter combination could readily be purchased for its inherent value as a general acronym and sees no clear evidence on the record in this case to suggest that was not the case. As a general rule it is likely that in such cases the registration will be for bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.

Thus for example in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (<kis.com>) the legitimate interest in short letter domain names was confirmed by that panel’s statement that:

“The Domain Name at issue here is a three-letter second-level domain within the popular ‘.com’ top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions’ Whois database), including ‘an.com’, ‘hw.com’, ‘vz.com’, ‘xv.com’, ‘yz.com’, ‘zw.com’, ‘aex.com’, ‘fii.com’, ‘ldn.com’, ‘lna.com’, ‘mhi.com’, ‘nnc.com’, ‘otl.com’, ‘tbj.com’, ‘tca.com’, ‘ukt.com’, ‘vaz.com’, ‘vdj.com’, ‘wla.com’, and probably many more. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant’s trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.”

See also Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105; Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260; Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI), WIPOCase No. D2015-1757; Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc. WIPO Case No. D2012-0454; and R.V. Kuhns & Associates, Inc. v. Gregory Ricks WIPO Case No. D2014-2041 all to similar effect.

The Panel accepts (and the Respondent concedes) that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.

In this regard the Panel has considered the points made by the Complainant as to its fame and reputation. The evidence establishes the Complainant is a substantial insurance company in Mexico and is likely widely known in that country by the acronym GNP. Conceivably it might be recognised elsewhere by others involved in the insurance business, although the evidence does not clearly establish that is the case. However the evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP. In short there is no applicable evidence on the record to suggest that the Respondent had any knowledge of the Respondent when he acquired the Disputed Domain Name.


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Do you see how the Panel looks at a broad picture of factual context, and not just "is it a three letter trademark and a three letter domain"?

When someone comes to me with this kind of an issue, it occasionally annoys them when I ask things like, "How many short acronym domains do you have, and what are they?", "Did you buy it with other domain names and what are they?" and so on.

These things are not decided on some mechanical basis of whether it is a three-letter trademark and a three-letter domain name. How any particular case might come out is a matter of (a) what are all of the relevant facts and (b) having a longstanding familiarity with how these cases are actually decided.

Have a look at previous cases

Well, instead of telling someone to do that, let's actually do that.

There have been 482 cases at WIPO in which the sole domain name at issue was three letters long:

https://www.dndisputes.com/search?domain_length=3&number_of_domains=1

If you want to narrow that down to just .com names, there have been 182:

https://www.dndisputes.com/search?domain_extension=com&domain_length=3&number_of_domains=1

The outcomes of those cases break down as folllows:


Now, it is difficult to tell in "terminated" cases whether there was a payment or simply a surrender by the domain registrant, and maybe someone might look at those 30 cases and see if it was clearly a well-known mark or not.

But if we look at "three letter .com cases which have gone to a decision" then you have 103 complaint denied and 46 transfers.

Overall, three letter .com domain registrants win 69% of the time in WIPO UDRP disputes.

So, if you want to know how your facts sort out, you should click on those links, look at some transfer decisions, look at some complaint denied decisions, and sort out where you think your facts match up best.

There is a species of classic Namepros nonsense that is worth addressing:

If someone owned "KFC dot fitness", and this is a personal website of a personal trainer called Chris helping people lose weight, and the business stood for "Kill Fat Chris" (funny, but lets go with it as a vague example), I wouldn't so sure if KFC, the chicken company, have a say in it ...considering its an entirely different sector, that isn't stepping on their business / their interests

There is a class of UDRP cases in which the domain registrant comes up with some dopey justification which is not believable at all. This type of case, where someone has a globally and instantly recognizable famous mark but claims "Oh, I'm using it for (insert implausible justification here)".

Those kinds of cases really make me angry because they erode the credibility of domain registrants generally.

So, no, there is no way on this planet that you are going to get away with "IBM.pets" by saying, "Well, you see, I run a business where I sell mice as pets, and I chose the name 'I breed mice'."

No. Even if it is true, nobody is going to believe it - and that happens once in a while too. I get bizarre emails from people hunting for justifications for cybersquatting all of the time. Once in a very long while there is someone who picked a really unfortunate name for a marginal but legitimate business, but the fact of the matter is that they are going to lose.

Imagine this scenario. Alan and Bob live in the same apartment building. All of the neighbors see them having a fight in the street. Alan yells "I'm going to kill you!" and Bob runs into the building. As Bob runs into the building, Alan's girlfriend, who was making dinner, walked out of Alan's apartment still holding one of Alan's kitchen knives. She is startled, falls down the stairs, and accidentally plunges the knife into Bob's chest and kills him. Horrified, she runs out of the back of the building and no one sees her.

Alan comes running into the building immediately afterward. He sees Bob lying there dead with one of Alan's knives in his chest. He pulls the knife out of Bob and is deciding what to do when the police come rushing in. And there is Alan standing over Bob's dead body with one of his own knives in his hand.

I don't care what Alan has to say. He's going to be arrested. He's probably going end up being convicted for murdering Bob, because Alan has no idea how one of his knives ended up killing Bob but, there he was, with the knife in his hand and Bob dead on the floor.

Whatever you do, don't come up with lame-ass stories about how you managed to register a famous trademark through some remarkable coincidence unless you can back it up with remarkable - and credible - evidence. My experience with people who make up these sorts of things is that they have limited critical thinking skills and are unable to assess what is believable and what is not, and that they seem to want to ride two horses at one time - coming up with mutually contradictory justifications in the hope that someone might believe one of them.

In any event, when someone wants to talk about doom & gloom about how the UDRP is unfair, etc., bear in mind that domain registrants win the overwhelming majority of decided three-letter .com single domain name UDRP disputes.
 
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Well, instead of telling someone to do that, let's actually do that.

What I can see by looking at the examples, haven't looked thoroughly though at each one though, is that they actually had a use for the name or planned on using it, often in a different industry altogether, they weren't just trying to sell it for profit. Safer to avoid TM domains, imo (especially for a .co name with no real plans for it but to flip it)

Some trademarks are more well-known than others. If we are talking about things like IBM, BBC, VW, HSBC or other instantly-recognizable, famous and well-known marks, then the domain registrant is probably not going to do so well.

I mean BNY is not just random letters, its a major Corp, even us aussies know about them 👍😊

Appreciate the expert opinion @jberryhill ....Thanks 👍
 
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eternaldomains

Established Member
Impact
357
Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI)
DKY.com
Case No. D2015-1757
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1757

The Respondent is in the business of monetizing "generic" and three-letter domain names. As submitted by the Respondent, a number of previous panels have found that as long as this business is not infringing on a complainant's rights in a mark, the Policy allows registration and use of domain names for this purpose.


Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc.
INW.com
WIPO Case No. D2012-0454
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-0454

The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.


R.V. Kuhns & Associates, Inc. v. Gregory Ricks
RVK.com
WIPO Case No. D2014-2041
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-2041

Three-letter domain names are well known to have particular value. They have often been the subject of domain name sales at substantial prices (a fact for which Respondent provided evidence in the Annexes to his Response). As long as Respondent did not register the disputed domain name in bad faith or in an attempt to trade on the goodwill associated with Complainant's mark (as discussed below), his contention is plausible that he has frequently engaged in the purchase and/or sale of three-letter domain names as part of his business and considers the acquisition of such domain names to be a legitimate enterprise.


PwC Business Trust v. Ultimate Search
PWC.com
WIPO Case No: D2002-0087
http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0087.html

The letters PWC, as the evidence shows clearly, could be attributable to the Public Work Center, Personal Water Craft, Pratt & Whitney Canada, and no doubt to many other identifiable people or matters. This inherent lack of distinctiveness is what undermines the Complainant's attempts to have the Panel regard mere registration of PWC.com by the Respondent as self evident bad faith.


Braunschweiger Maschinenanstalt AG v. SearchMachine
BMA.com
WIPO Case No. D2011-1794
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1794

In John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 (the domain name <financialreview.com>), the majority of the panel held that there was no evidence that the first respondent who was a dealer in generic names in the United States, knew or ought to have known about a financial newspaper in Australia operating under the relatively descriptive name “Financial Review”. See also Richard L. Kane v. Nick Devine, WIPO Case No. D2001-1028.


------

What gets missed in these discussions, despite years now of pointing this out, is that as noted by another poster upthread, there are a lot of facts that go into these things to decide the outcome, and it is not simply a matter of "three letter trademark vs. three letter domain".

Some trademarks are more well-known than others. If we are talking about things like IBM, BBC, VW, HSBC or other instantly-recognizable, famous and well-known marks, then the domain registrant is probably not going to do so well.

Another consideration is how well known the three letter combination might be, relative to the trademark.

In the recent case of GNP.com, the question boils down to asking whether the letters "GNP" make you think of:

(a) a Mexican insurance company, or

(b) Gross National Product.


Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton
GNP.com
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136

The Panel considers a domain name comprising a three-letter combination could readily be purchased for its inherent value as a general acronym and sees no clear evidence on the record in this case to suggest that was not the case. As a general rule it is likely that in such cases the registration will be for bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.

Thus for example in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (<kis.com>) the legitimate interest in short letter domain names was confirmed by that panel’s statement that:

“The Domain Name at issue here is a three-letter second-level domain within the popular ‘.com’ top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions’ Whois database), including ‘an.com’, ‘hw.com’, ‘vz.com’, ‘xv.com’, ‘yz.com’, ‘zw.com’, ‘aex.com’, ‘fii.com’, ‘ldn.com’, ‘lna.com’, ‘mhi.com’, ‘nnc.com’, ‘otl.com’, ‘tbj.com’, ‘tca.com’, ‘ukt.com’, ‘vaz.com’, ‘vdj.com’, ‘wla.com’, and probably many more. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant’s trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.”

See also Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105; Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260; Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI), WIPOCase No. D2015-1757; Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc. WIPO Case No. D2012-0454; and R.V. Kuhns & Associates, Inc. v. Gregory Ricks WIPO Case No. D2014-2041 all to similar effect.

The Panel accepts (and the Respondent concedes) that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.

In this regard the Panel has considered the points made by the Complainant as to its fame and reputation. The evidence establishes the Complainant is a substantial insurance company in Mexico and is likely widely known in that country by the acronym GNP. Conceivably it might be recognised elsewhere by others involved in the insurance business, although the evidence does not clearly establish that is the case. However the evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP. In short there is no applicable evidence on the record to suggest that the Respondent had any knowledge of the Respondent when he acquired the Disputed Domain Name.


-----------

Do you see how the Panel looks at a broad picture of factual context, and not just "is it a three letter trademark and a three letter domain"?

When someone comes to me with this kind of an issue, it occasionally annoys them when I ask things like, "How many short acronym domains do you have, and what are they?", "Did you buy it with other domain names and what are they?" and so on.

These things are not decided on some mechanical basis of whether it is a three-letter trademark and a three-letter domain name. How any particular case might come out is a matter of (a) what are all of the relevant facts and (b) having a longstanding familiarity with how these cases are actually decided.



Well, instead of telling someone to do that, let's actually do that.

There have been 482 cases at WIPO in which the sole domain name at issue was three letters long:

https://www.dndisputes.com/search?domain_length=3&number_of_domains=1

If you want to narrow that down to just .com names, there have been 182:

https://www.dndisputes.com/search?domain_extension=com&domain_length=3&number_of_domains=1

The outcomes of those cases break down as folllows:


Now, it is difficult to tell in "terminated" cases whether there was a payment or simply a surrender by the domain registrant, and maybe someone might look at those 30 cases and see if it was clearly a well-known mark or not.

But if we look at "three letter .com cases which have gone to a decision" then you have 103 complaint denied and 46 transfers.

Overall, three letter .com domain registrants win 69% of the time in WIPO UDRP disputes.

So, if you want to know how your facts sort out, you should click on those links, look at some transfer decisions, look at some complaint denied decisions, and sort out where you think your facts match up best.

There is a species of classic Namepros nonsense that is worth addressing:



There is a class of UDRP cases in which the domain registrant comes up with some dopey justification which is not believable at all. This type of case, where someone has a globally and instantly recognizable famous mark but claims "Oh, I'm using it for (insert implausible justification here)".

Those kinds of cases really make me angry because they erode the credibility of domain registrants generally.

So, no, there is no way on this planet that you are going to get away with "IBM.pets" by saying, "Well, you see, I run a business where I sell mice as pets, and I chose the name 'I breed mice'."

No. Even if it is true, nobody is going to believe it - and that happens once in a while too. I get bizarre emails from people hunting for justifications for cybersquatting all of the time. Once in a very long while there is someone who picked a really unfortunate name for a marginal but legitimate business, but the fact of the matter is that they are going to lose.

Imagine this scenario. Alan and Bob live in the same apartment building. All of the neighbors see them having a fight in the street. Alan yells "I'm going to kill you!" and Bob runs into the building. As Bob runs into the building, Alan's girlfriend, who was making dinner, walked out of Alan's apartment still holding one of Alan's kitchen knives. She is startled, falls down the stairs, and accidentally plunges the knife into Bob's chest and kills him. Horrified, she runs out of the back of the building and no one sees her.

Alan comes running into the building immediately afterward. He sees Bob lying there dead with one of Alan's knives in his chest. He pulls the knife out of Bob and is deciding what to do when the police come rushing in. And there is Alan standing over Bob's dead body with one of his own knives in his hand.

I don't care what Alan has to say. He's going to be arrested. He's probably going end up being convicted for murdering Bob, because Alan has no idea how one of his knives ended up killing Bob but, there he was, with the knife in his hand and Bob dead on the floor.

Whatever you do, don't come up with lame-ass stories about how you managed to register a famous trademark through some remarkable coincidence unless you can back it up with remarkable - and credible - evidence. My experience with people who make up these sorts of things is that they have limited critical thinking skills and are unable to assess what is believable and what is not, and that they seem to want to ride two horses at one time - coming up with mutually contradictory justifications in the hope that someone might believe one of them.

In any event, when someone wants to talk about doom & gloom about how the UDRP is unfair, etc., bear in mind that domain registrants win the overwhelming majority of decided three-letter .com single domain name UDRP disputes.

Thanks for the detailed info. Can you give your input regarding the latest ICANN law on IGO immunity? Once it's passed, can UN.org (or other IGOs) immediately seize UN.com (or other respective acronym coms), and if so, would there be any recourse for the com holders?
 

Future Sensors

78% of human domainers will be replaced by robots
Impact
8,920
So, no, there is no way on this planet that you are going to get away with "IBM.pets" by saying, "Well, you see, I run a business where I sell mice as pets, and I chose the name 'I breed mice'."

This here alone deserves 2 Likes. Or 2 Loves. Enjoyed your whole posting. Thanks for your time, sharing knowledge and educating this forum once again. Your active participation in the domain community is both your, and also our, greatest asset.
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
Thanks for the detailed info. Can you give your input regarding the latest ICANN law on IGO immunity? Once it's passed, can UN.org (or other IGOs) immediately seize UN.com (or other respective acronym coms), and if so, would there be any recourse for the com holders?

Okay, so, here's the problem - Can IGO's have their initials abused by phishing, impersonation, etc.? Yes they can.

I'll give you a concrete example. The EU Intellectual Property Office runs a great multi-office trademark document search system called TMVIEW. I used this database every day in my practice:

https://www.tmdn.org/tmview/welcome#/tmview

Because I'm as lazy as the next guy, I was habitually navigating to that site by typing "tmview" in a combined URL/search bar in my browser and just clicking on the first thing that came up, because it was usually the first thing that came up.

The folks who own or had owned TMVIEW.com put up a fake copy of the EUIPO TMVIEW welcome page with its search bar. Not paying attention, it was very easy not to notice that one was at tmview.com instead of tmdn.org. If you typed in a search, it would then forward you to the EUIPO site, which would generate a search error. Again, you wouldn't really notice, re-do your search, and proceed. But the domain owner was collecting valuable commercial intelligence by knowing what IP's (traceable to law firms or companies) were searching what potential marks in the TMVIEW database. Imagine what you'd do with that data.

So, this is a problem that IGO's have. The problem with the UDRP is that in order to file a complaint, the complainant has to agree to be sued in the jurisdiction of either the registrar or the registrant (the UDRP "Mutual Jurisdiction"). Many treaty organizations have what amounts to diplomatic immunity - they can't be sued in courts.

That kind of thing happens all of the time in law. One notable example is the young man who was killed by a drunk-driving spouse of a US diplomat in the UK. So this whole thing about "IGO's can do whatever!" is a subspecies of the reason why drivers in Washington DC with diplomatic plates can park where they want and drive however they want with no consequences. The larger picture in which this particular thing happens is not "new" in any sense.

So, they want to be able to use the UDRP, but without having to admit to judicial jurisdiction.

As I have demonstrated in this thread, with the statistics above, domain registrants actually WIN the overwhelming majority of three-letter domain cases, to just use this as an example. I have not done a statistical rundown on those losing cases. For example, ado.com was one that was challenged in court and reversed.

But the fact of the matter is that if you are using a US based registrar and don't have upwards of $20k in your pocket for starters, you aren't going to be litigating your bad UDRP decision in the first place. Just serving process on a foreign defendant in a US court is going to cost you anywhere from $2500 to $5000 and that's before you even move forward on much.

So, first, there is a problem that could stand to be addressed, since people do take advantage of domain names which are confusingly similar to IGO designations for bad purposes. Simply saying "too bad" to that is not a good plan.

But, no, there is no proposal by which IGO's can have your domain name free for the asking. If that's what they were after, there would not be a proposal to use the UDRP in the first place. Now, sure, if you are one of those people who think the UDRP is an orgy of unfairly grabbing names, then, yep, that's what this is.

I haven't looked at the current proposal in detail because, quite frankly, I've wasted a lot of my personal time on ICANN policy over the last 20 years on behalf of people who really don't know or care and at significant personal sacrifice, and often to see other people claim credit for a few modest things I was able to accomplish.

But, by the same token, the IGO wouldn't have any recourse in court either. Take France.com for example. If the government of France was limited to using the UDRP, and couldn't pursue a court case, they'd lose - hands down. Every country that has tried to UDRP a country name has lost. But, they didn't do that. They pursued a French court case, and thus far two US courts have ratified the outcome of enforcing that French court decision here in the US.

So, the France.com situation stands this whole "hair on fire" thing about IGO UDRP's on its head, really. It would have been vastly preferable for that case to have been a UDRP all-or-nothing decision, because the right result would have been readily reached, and that would be the end of it.

Are there bad UDRP decisions? You betcha. So far this year I have not only won every case I have defended, but only ONE of them wasn't an RDNH on top. Bad decisions attract a lot of attention, and deservedly so, but they are not representative of the run of cases.

There are, however, also bad court decisions. Not only are bad court decisions bad, but they are orders of magnitude more expensive and can include claims for monetary damages against the domain registrant.

One to watch is the Empower.com case, in which thus far there has been a motion to dismiss and in which the reply to the motion to dismiss was filed yesterday. Absolute howler of an unjust case, and would be a sure loser in the UDRP, which is why they didn't file a UDRP, but are going to drag the domain registrant through civil litigation to try to steal his senior domain name.

So, I'm kind of "meh" on the outrage over it. Litigation is a not a game for the faint of heart or the light of wallet in the first place, so for the overwhelming majority of Namepros readers or domainers generally, it's entirely an academic question whether they could or could not litigate a UDRP outcome on an IGO name, because it's not as if they could afford to litigate a UDRP outcome anyway.

Whatever they decide, there are so many situations in which a legitimate domain registrant does not take a UDRP seriously, and does not put the effort/work/resources/whatever into defending it. Then, if they can afford it, they have to spend a ****-ton of money litigating it if they can afford to do so.

So, that's what the IGO thing is about, to the extent I've bothered to look at it. They're going to do what they're going to do, and the folks who work (and some of whom actually get paid) to make these things "less bad" are doing fine without my input.
 
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Jason Baudendistel

CEO Wibbets Inc
Impact
696
What I can see by looking at the examples, haven't looked thoroughly though at each one though, is that they actually had a use for the name or planned on using it, often in a different industry altogether, they weren't just trying to sell it for profit. Safer to avoid TM domains, imo (especially for a .co name with no real plans for it but to flip it)



I mean BNY is not just random letters, its a major Corp, even us aussies know about them 👍😊

Appreciate the expert opinion @jberryhill ....Thanks 👍
I agree with both unless you have a clear unrelated use don't reg or pickup domains that could be a TM issue not worth it. I found out my Reg of Eplane.com in Japanese was a TM issue so not keeping it.
 

Jason Baudendistel

CEO Wibbets Inc
Impact
696
What I can see by looking at the examples, haven't looked thoroughly though at each one though, is that they actually had a use for the name or planned on using it, often in a different industry altogether, they weren't just trying to sell it for profit. Safer to avoid TM domains, imo (especially for a .co name with no real plans for it but to flip it)



I mean BNY is not just random letters, its a major Corp, even us aussies know about them 👍😊

Appreciate the expert opinion @jberryhill ....Thanks 👍
I agree with both unless you have a clear unrelated use don't reg or pickup domains that could be a TM issue not worth it. I found out my Reg of Eplane.com in Japanese was a TM issue so not keeping it.
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
My advice, figure out a use and pull the sale listing.

See? This is the kind of thing that drives me nuts at Namepros. I just provided a link to all of the three-letter WIPO UDRP outcomes, from which you can learn a lot.

One thing that HELPS you in a three-letter UDRP is to be able to show things like:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136
GNP.com

The Respondent provides evidence which shows that he has a business model which comprises acquiring generic domain names, including three letter acronyms, and then typically creates a logo to go with such domain names and prepares a custom “sales pitch” for each domain name. The Respondent says he operates the “namerific.com” website which shows how this business model works.

...

The Panel considers that is the case here – the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark.


https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-2166
KLIR.com

The Respondent’s evidence in relation to this element is that he is a domain name dealer and has
registered a number four-letter acronymic domain names, including the Domain Name <klir.com>.
The disputed Domain Name, like other four-letter domains, has inherent value
and was acquired
by the Respondent in 2016, before the Complainant’s trademark rights came into existence. It has
never been used to target the Complainant.

See Franklin Mint Federal Credit Union v. GNO, Inc., FA 0860527 (FORUM Mar. 9, 2007): “The fact
that Respondent appears to be a generic domain name reseller supports findings that Respondent
has rights or legitimate interests in the <fmcu.com> domain name
pursuant to Policy ¶ 4(a)(ii).”;
Digel Aktiengesellschaft v. Vinay Shan, D2018-1328 (WIPO Aug. 9, 2018) (“the registration of large
numbers of domain names for the purpose of offering them for sale to third parties is not an
inherently objectionable activity under the Policy (subject to the caveat below) and is capable of
comprising a bona fide offering of goods and services.”)

So, no, if someone is coming after you for a two- three- or four- letter domain name, or a dictionary word for that matter, then it HELPS you to be able to say something like "Here, look, I have a couple of dozen names like this - just "generic" non-trademark N-letter names (or dictionary words) and I post them for sale (or use them for appropriate PPC topics) as a regular practice. There is nothing special about this domain name that has anything to do with the Complainant."

I can show you many, many cases in which the fact that the respondent regularly offers names for sale is a HUGE defensive asset, which shows that the acquisition of the disputed domain name was objectively most likely inspired by the fact that it is a three-letter name, in which the respondent regularly deals. Treating the name differently than the 500 other names you have listed for sale is simply shooting yourself in the foot.

But, yeah, you'll get all kinds of uninformed opinions based on 'what I heard' or 'what I think' on Namepros, but which are not grounded in any objective study, knowledge or experience in how these cases are actually decided. This is a prime example.
 

Jason Baudendistel

CEO Wibbets Inc
Impact
696
See? This is the kind of thing that drives me nuts at Namepros. I just provided a link to all of the three-letter WIPO UDRP outcomes, from which you can learn a lot.

One thing that HELPS you in a three-letter UDRP is to be able to show things like:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136
GNP.com

The Respondent provides evidence which shows that he has a business model which comprises acquiring generic domain names, including three letter acronyms, and then typically creates a logo to go with such domain names and prepares a custom “sales pitch” for each domain name. The Respondent says he operates the “namerific.com” website which shows how this business model works.

...

The Panel considers that is the case here – the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark.


https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-2166
KLIR.com

The Respondent’s evidence in relation to this element is that he is a domain name dealer and has
registered a number four-letter acronymic domain names, including the Domain Name <klir.com>.
The disputed Domain Name, like other four-letter domains, has inherent value
and was acquired
by the Respondent in 2016, before the Complainant’s trademark rights came into existence. It has
never been used to target the Complainant.

See Franklin Mint Federal Credit Union v. GNO, Inc., FA 0860527 (FORUM Mar. 9, 2007): “The fact
that Respondent appears to be a generic domain name reseller supports findings that Respondent
has rights or legitimate interests in the <fmcu.com> domain name
pursuant to Policy ¶ 4(a)(ii).”;
Digel Aktiengesellschaft v. Vinay Shan, D2018-1328 (WIPO Aug. 9, 2018) (“the registration of large
numbers of domain names for the purpose of offering them for sale to third parties is not an
inherently objectionable activity under the Policy (subject to the caveat below) and is capable of
comprising a bona fide offering of goods and services.”)

So, no, if someone is coming after you for a two- three- or four- letter domain name, or a dictionary word for that matter, then it HELPS you to be able to say something like "Here, look, I have a couple of dozen names like this - just "generic" non-trademark N-letter names (or dictionary words) and I post them for sale (or use them for appropriate PPC topics) as a regular practice. There is nothing special about this domain name that has anything to do with the Complainant."

I can show you many, many cases in which the fact that the respondent regularly offers names for sale is a HUGE defensive asset, which shows that the acquisition of the disputed domain name was objectively most likely inspired by the fact that it is a three-letter name, in which the respondent regularly deals. Treating the name differently than the 500 other names you have listed for sale is simply shooting yourself in the foot.

But, yeah, you'll get all kinds of uninformed opinions based on 'what I heard' or 'what I think' on Namepros, but which are not grounded in any objective study, knowledge or experience in how these cases are actually decided. This is a prime example.

Thank you for your feedback, not a lawyer, never claimed to be my concern was the impression the sale listing gave to the other party. However you make a good point for arguing it is a non related raw asset as a defense is sound.
 

equity78

Top Member
TheDomains Staff
TLDInvestors.com
Impact
25,291
What I can see by looking at the examples, haven't looked thoroughly though at each one though, is that they actually had a use for the name or planned on using it, often in a different industry altogether, they weren't just trying to sell it for profit. Safer to avoid TM domains, imo (especially for a .co name with no real plans for it but to flip it)

The first 5 Giles were all domain investors some of the most prominent in the industry, Frank Schilling, Nat Cohen, Greg Ricks
 
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The first 5 Giles were all domain investors some of the most prominent in the industry, Frank Schilling, Nat Cohen, Greg Ricks

Yeah I saw those obvious ones which go in favour of the registrant (name admin, telepathy etc), I actually went to the other link and picked some random ones to see, used archive.org and some other tools to check. Personally, I still think its not worth it, especially when it comes to big corps.
 

equity78

Top Member
TheDomains Staff
TLDInvestors.com
Impact
25,291
Yeah I saw those obvious ones which go in favour of the registrant (name admin, telepathy etc), I actually went to the other link and picked some random ones to see, used archive.org and some other tools to check. Personally, I still think its not worth it, especially when it comes to big corps.

You do have to decide if you have the resources to go after the big corp. The top domainers previously mentioned all had the resources to go after the name in the courts if they lost a UDRP. So I agree it's a point you need to think about.

What I have always wondered and @jberryhill would know is if it makes sense to correspond back and state you know your rights and are prepared to go to the UDRP or hire a lawyer to contact them. Or do you just sit and wait and take the chances in a UDRP?
 

eternaldomains

Established Member
Impact
357
See? This is the kind of thing that drives me nuts at Namepros. I just provided a link to all of the three-letter WIPO UDRP outcomes, from which you can learn a lot.

One thing that HELPS you in a three-letter UDRP is to be able to show things like:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136
GNP.com

The Respondent provides evidence which shows that he has a business model which comprises acquiring generic domain names, including three letter acronyms, and then typically creates a logo to go with such domain names and prepares a custom “sales pitch” for each domain name. The Respondent says he operates the “namerific.com” website which shows how this business model works.

...

The Panel considers that is the case here – the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark.


https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-2166
KLIR.com

The Respondent’s evidence in relation to this element is that he is a domain name dealer and has
registered a number four-letter acronymic domain names, including the Domain Name <klir.com>.
The disputed Domain Name, like other four-letter domains, has inherent value
and was acquired
by the Respondent in 2016, before the Complainant’s trademark rights came into existence. It has
never been used to target the Complainant.

See Franklin Mint Federal Credit Union v. GNO, Inc., FA 0860527 (FORUM Mar. 9, 2007): “The fact
that Respondent appears to be a generic domain name reseller supports findings that Respondent
has rights or legitimate interests in the <fmcu.com> domain name
pursuant to Policy ¶ 4(a)(ii).”;
Digel Aktiengesellschaft v. Vinay Shan, D2018-1328 (WIPO Aug. 9, 2018) (“the registration of large
numbers of domain names for the purpose of offering them for sale to third parties is not an
inherently objectionable activity under the Policy (subject to the caveat below) and is capable of
comprising a bona fide offering of goods and services.”)

So, no, if someone is coming after you for a two- three- or four- letter domain name, or a dictionary word for that matter, then it HELPS you to be able to say something like "Here, look, I have a couple of dozen names like this - just "generic" non-trademark N-letter names (or dictionary words) and I post them for sale (or use them for appropriate PPC topics) as a regular practice. There is nothing special about this domain name that has anything to do with the Complainant."

I can show you many, many cases in which the fact that the respondent regularly offers names for sale is a HUGE defensive asset, which shows that the acquisition of the disputed domain name was objectively most likely inspired by the fact that it is a three-letter name, in which the respondent regularly deals. Treating the name differently than the 500 other names you have listed for sale is simply shooting yourself in the foot.

But, yeah, you'll get all kinds of uninformed opinions based on 'what I heard' or 'what I think' on Namepros, but which are not grounded in any objective study, knowledge or experience in how these cases are actually decided. This is a prime example.

So, for example, if a new domainer, who obviously didn't have many 2L names, acquires a 2L name, which obviously has many TMs registered by many companies, and then starts sending outbound sales emails to potential companies without checking for TMs since there's just too many of them, that domainer will be in very hot soup right?
 

HotKey

Made in Canada
Impact
8,866
What I have always wondered and @jberryhill would know is if it makes sense to correspond back and state you know your rights and are prepared to go to the UDRP or hire a lawyer to contact them. Or do you just sit and wait and take the chances in a UDRP?
Surely you've been around long enough to have gotten a similar notice or two like the one the OP displayed. With the prevalence of TM's covering everything from Bob's uncle's straw bricks to single character alphabet letters, it is almost impossible as domain investors to completely fly under these entitled people's radar.

I have received one or two of these emails myself, and I knew beyond a doubt that any similarity the DN had with the TM ended with the raw domain name itself. There was no indication of infringement, purposeful or even coincidental in the DN's usage. They were sent as strong-arm tactics in the hopes that these domains would simply be handed over, no questions asked. Both cases I have responded, and with the truth: the domains were purchased for personal use and had no relation to the company and its mark in question. One request was for a single-letter domain, the other a five-character generic word.

It's been years and the buck stopped there. Luckily. I'm not sure how beneficial it could be though if the entity happened to be a more ambitious study, set on taking it further regardless of reply. A damn nightmare for sure, the logic or common sense of the little man might be like bringing a sword to a gunfight.

So, for example, if a new domainer, who obviously didn't have many 2L names, acquires a 2L name, which obviously has many TMs registered by many companies, and then starts sending outbound sales emails to potential companies without checking for TMs since there's just too many of them, that domainer will be in very hot soup right?
My first inclination on this is yes, actively courting a TM holder with one of your domains, whether or not you did your research, is a nice ingredient for that hot soup called bad faith..
 
Impact
27,175
using only as parking/ landing page
But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith. I would recommend landing page only, so no possibility they can claim you are benefitting from, or interfering with, their TM.
 

equity78

Top Member
TheDomains Staff
TLDInvestors.com
Impact
25,291
Surely you've been around long enough to have gotten a similar notice or two like the one the OP displayed. With the prevalence of TM's covering everything from Bob's uncle's straw bricks to single character alphabet letters, it is almost impossible as domain investors to completely fly under these entitled people's radar.

I have received one or two of these emails myself, and I knew beyond a doubt that any similarity the DN had with the TM ended with the raw domain name itself. There was no indication of infringement, purposeful or even coincidental in the DN's usage. They were sent as strong-arm tactics in the hopes that these domains would simply be handed over, no questions asked. Both cases I have responded, and with the truth: the domains were purchased for personal use and had no relation to the company and its mark in question. One request was for a single-letter domain, the other a five-character generic word.

It's been years and the buck stopped there. Luckily. I'm not sure how beneficial it could be though if the entity happened to be a more ambitious study, set on taking it further regardless of reply. A damn nightmare for sure, the logic or common sense of the little man might be like bringing a sword to a gunfight.

Thankfully no, never ever have received one. The LLL I owned and I have owned them in .com, .co, .tv never were any famous marks.

I have handled negotiations for a couple friends that had a company say the name was their rightful property. Each time like your experience, once I explained that we knew the law and knew our rights in the name, it was purchased.
 

equity78

Top Member
TheDomains Staff
TLDInvestors.com
Impact
25,291
But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith. I would recommend landing page only, so no possibility they can claim you are benefitting from, or interfering with, their TM.

Exactly don't ever park the name, have a coming soon page.
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith.

Exactly don't ever park the name, have a coming soon page.

Here's the thing about parking and acronym domains....

Take a case like "GNP" mentioned above. It is very well known as "Gross National Product" and not as well known as a Mexican insurance company. You have to think on a scale, and not in binary terms.

Some great resources are out there like.... you'll never guess what I'm going to recommend... GOOGLE - for figuring out the relative significance of a trademark vs. acronymic meaning for a short string of letters. There are also things like acronym finder, etc.

Now about PPC. I don't know what the morons who run these systems are up to these days, but for many, many years, I've been saying the same thing - you have to use a system that lets you target the results. That was, at least back when I was there, the entire point of the targeting system in the Uniregistry marketplace. There was even a category "Shopping : personalization" that would point a name to ads for things like monogrammed merchandise etc.

Do not use "coming soon" or some other basically dishonest statement that you will be developing a name if you will not be developing a name. It doesn't help you to lie. Likewise, don't use a dumbass statement like "this name might be for sale". That second one is a pet peeve of mine. It's like "I sell drugs, unless you are a cop." Just dumb stuff.

I'm amazed that people can look at those cases and say "don't use parking" (and I see that Bob has said "be very careful" which is correct). Name Administration had over 37 UDRP wins with every single name on PPC parking. And people still say "don't park the name". It's not that simple.

Take a case like JDM.com. I can't even remember what the complainant's trademark was for, but the name was parked with links to Japanese car parts because "JDM" is an industry-standard acronym for "Japanese Domestic Manufacture" - they are car parts made in Japan but not for export, and they are popular with people who are into pimping out ricemobiles.

But, if you can't target the PPC, then, yeah, it is likely to target on some obscure TM meaning, and possibly in a geographic area other than your own, so you aren't even going to know.

If your names are valuable to you, and you have them on PPC, then take the time to have a look at what those names are doing. For example, if you have armbone.com and the PPC links are for "orthopedic doctors", "vitamin D", "weightlifting", etc., then you are probably okay. But if the links come up "footwear", "shoes", "athletic shoes", and so on, then that might be a good sign that someone is using "armbone" as a trademark for shoes, it is feeding back into the PPC engine, and you are going to lose a UDRP.

Then, we come to the next two misguided pieces of advice - "don't resolve the page" or "just put it on a 'for sale' lander".

Not resolving the page at all is itself a point against you in the UDRP. Period. You are throwing away the "legitimate interest" criterion and into "non-use as bad faith use".

A UDRP proceeding is focused on "why did this person register this domain name?" and is going to look at any OBJECTIVE evidence that helps answer that question.
If you do not grasp that point and its implications, you are just going to keep punching yourself in the nuts.

So, let's run through the options:

1. Targeted PPC relevant to a generic meaning - The name speaks for itself. If the name is "ELK.com" and it has PPC ads for hunting equipment, hunting lodges, hunting guides, etc., then we can be pretty sure that it wasn't registered to take advantage of some obscure Australian trademark for clothing. That's a good chunk of the non-priority-driven UDRP outcomes in favor of the domain registrant.

2. A "for sale" lander - The situation is not as clear. Is the person looking to sell it for its trademark value, or for its dictionary meaning. We don't know, so let's have a look at things like previous cases with this person, what OTHER sorts of names have they bought and sold, etc.. This species of case is why it is good to have a consistent pattern of buying and selling generic names, phrases, acronyms, etc.

3. Name not resolving - who knows. The domain registrant is not helping themselves here.

There is a hybrid approach, and I've discussed it before. If targeted PPC is no longer possible - and I don't keep up with the various ripoff outfits that provide PPC anymore - then you ought to consider a TARGETED for sale page.

If you have a name worth $XXXX, then it is probably worth a few minutes to EXPLAIN WHY IT IS VALUABLE. Instead of simply "this name is for sale", why not expend a few words to actually SELL it.

Take this page for HAI.com, for example:

Screen Shot 2021-10-18 at 9.39.31 AM.png


"Hai" is the common latin script transliteration of a common Japanese expression. Now, let's say there is some company out there with a trademark for "HAI" for weed killer. They file a UDRP complaint and say, "The registrant tried to sell me the name for $75,000 and it is my trademark!"

Now, look at that page, and look at that UDRP claim, and pretend you are a UDRP panelist. Answer the question, "Why does the respondent think the name is worth $75,000?" The answer is bleedingly obvious.

Let's try another one. GINGHAM.com :

Screen Shot 2021-10-18 at 9.44.46 AM.png


Okay, now, suppose some company in Switzerland has a trademark on "GINGHAM" for yodeling instruction. Who is going to win the UDRP?

A TARGETED for sale lander doesn't need to be that elaborate. A few words will do. If you have a three letter domain name that is used for ten different generic acronyms, then simply say so. "This rare three-letter domain name can be used for your initials or whatever else you might want these three letters to stand for. A few common meanings are ..."

What is going to save you in a UDRP is an obvious and credible reason why the domain name has value apart from whatever narrow trademark meaning it may have. If the ONLY real significance of the name is as a trademark, you are wasting your time. If you think that "I bite monkeys" with monkey meat recipes is going to justify registering IBM, then you are wasting your time.

I realize that some domainers don't quite grasp the distinction between an objectively credible rationale and ad hoc rationalizations, but I can't fix that.
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
Would that be suitable, and if so, would that setup help defend risky names like IBM?

1. If you have bigshoes.com, then using it as a re-direct to a site where you are selling shoes is fine.

2. If you have Nikeshoes.com, then using it as a re-direct to a site where you are selling shoes is trademark infringement.

3. If you have IBMServers.com, then using it as a re-direct to a site where you are selling shoes is trademark dilution.

Using a famous or inherently distinctive mark to direct to your online store is going to simply be viewed as exploiting someone else's goodwill for commercial gain by diverting traffic intended for them.
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
But, if anyone is still reading this thread, here's a classic example of a great name that is likely to be ruined by PPC.

This popped up at the NAF:

Screen Shot 2021-10-19 at 10.51.37 AM.png


Oh, hey, common dictionary word, no problem, right?

Here's the thing. If you look at what the name is doing on PPC, the first link on the page is this one:

Screen Shot 2021-10-19 at 10.48.29 AM.png


Now, personally, I had no idea (until a few minutes ago) what on earth the word "tips" has to do with "alcohol training".

This is the kind of thing you can figure out pretty quickly in what I call "guess the complainant".....

First hit in a Google search:

Screen Shot 2021-10-19 at 10.48.43 AM.png


Now, think about this for a minute. You have tips.com and you put it on automated PPC. Elsewhere in the internet advertising ecosystem, there is someone paying to have Google connect "tips" and "alcohol". So, their own PPC advertising feeds back into domain parking systems and produces search links that are relevant to the trademark.

That's why people say "don't use PPC". If there is an obscure mark out there, PPC will find it and poison your name - IF YOU CAN'T TARGET THE RESULTS. If you CAN target the PPC results, then relevant ad topics will save the name. If the page was targeted to things like restaurant jobs, it would actually establish legitimate rights in a UDRP dispute.

You could say "But the domain registrant doesn't even know the PPC system is doing that." Too bad. The majority of UDRP panels take the position that if you own a hotel, and there is a prostitution or drug business operating out of that hotel, then you can't claim "I just own the hotel", even if you aren't getting a cut of the illicit action. In some cases, there have been panels which did recognize that incidental or brief appearance of relevant PPC ads was driven by the complainant's own advertising and not generally reflective of the registrant's intent - e.g. pig.com, outside.com, eaa.com and gnp.com (mentioned above).
 

Future Sensors

78% of human domainers will be replaced by robots
Impact
8,920
Now, think about this for a minute. You have tips.com and you put it on automated PPC.

The result on the page is indeed clear. I wonder the following. Do the panels take into account in some way that the domain owner does not know what kind of advertisements will appear on the lander? It can also differ per region so that he is not aware of what is shown.
 
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jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,069
Do the panels take into account in some way that the domain owner does not know what kind of advertisements will appear on the lander?

As I mentioned, in extremely rare cases (outside.com, gnp.com, eaa.com). The general rule applied by panelists is stated here:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item35

3.5 Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?

Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant’s mark (e.g., through “negative keywords”) to be a mitigating factor in assessing bad faith.

-------------

It's important to recognize when a potential defense becomes a black hole which would swallow the UDRP. In a lot of instances, there's no way to tell if the respondent has targeted or not targeted the PPC links on the page.

So, anyone could take a trademark, set up infringing PPC links and say, "Oh, I didn't know."

Which again circles back to whether there are other facts that put that denial into a context which supports it. What kind of name is it? What kind of mark is it? Can you show that the PPC links were caused by the Complainant's own advertising? (e.g. pig.com, elephant.com)

Incidentally, when I mention specific domain names like that ^^^^, I'm referring to the UDRP disputes pertaining to those names. The pay rate at Namepros is not conducive to spending a lot of time on citations.
 
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