Disturbing; 12 Year Old Canary.com Lost in UDRP

[lennco]

Complainant Canary LLC just was awarded the domain name canary.com by a one member National Arbitration Forum Panel

Canary is in the dictionary and is a type of bird.

The decision was published in Chinese and translated into English by Google.

The decision in pretty disturbing because the panel incorrectly states as matter of law that the fact the domain was parked is equivalent to non-use of the domain and due to being parked/not used the domain holder has not legitimate rights to the domain.

Of course the domain holder didn’t do himself any favors by not going for the three member panel and quoting $7,000,000 for the domain.

Here are the facts and finding by the panel:

The complainant is a company registered in the United States . The complainant was registered in the U.S. have CANARY and THE CANARY trademark owners. As early as 1984 the complainant started using CANARY trademarks in the United States .

The complainant principally engaged in sales CANARY brand oilfield drilling services throughout the United States production of oil and gas companies . As early as 1984 the complainant began selling CANARY brand oilfield drilling production services.

Disputed domain name registered in 2001 by the respondent , but the respondent never used disputed domain name.

Disputed domain name site has been ” parked ”

Now more than 10 years.

The respondent has no rights to the disputed domain name or legitimate interests .

Respondent has registered more than 170 domain names.

All domain names are not used .

Respondent seems to be in a lot of fields out of business registration in order to sell them to someone else.

Disputed domain name has been registered and used maliciously .

The disputed domain name on the page that ” buy this domain “, when contact with the complainant , the complainant provided the disputed domain name was for sale for $ 7,000,000.00 .

In addition, the complainant registered more than 150 domain name registration to the fact that with someone else ‘s registered trademark as a domain name registration and domain currently use or lack of articulated plan , suggested that he maliciously registered domain name intends to sell the complainant or the complainant competitor which constitute bad faith registration and use.


Evidence that the Respondent registered the domain name intentionally rational use through the illusion of being concealed their trading sites sell the domain name in order to reap unfair commercial interests.

Meanwhile according to the relevant searches , the Respondent also registered by other similar domain names and websites for sale in this domain , such acts have been met “Policy” section 4 (a)) (i) under paragraph malicious domain name registration and use situation.

Given the above reasons, the Panel finds that the disputed domain name in bad faith registration and use . Therefore, the Panel finds that the Complainant has completed its policy section 4 (a) of the third burden of proof.
http://www.thedomains.com/2013/10/24/disturbing-12-year-old-canary-com-lost-in-udrp/?fb_source=pubv1

Scary stuff

 

[Traveler]

That is pretty scary.

 

[Eric Lyon]

Interesting. Looks like they are finally cracking down big time on the whole Cybersquatting law that hasn't been enforced very strongly over the years. While this case looks to be a bit extreme, I think the nail in the coffin was when the registrant tried to sell the domain for profit to the TM holder when they contacted him about it. The 10 years of being parked / undeveloped didn't help the registrant at all since it basically enforced the notion that there was no intent to develop and all the intent to squat for resale / profit.

It may or may not have played out differently with a 3 judge panel since 3 opinions would be in play, however I think that the new tld's coming soon and the heightened media frenzy with TM / IP right issues in the domain industry, these kind of rulings are going to become more frequent. Which I agree with the first 2 posters, and will be scary for many people with thousands invested in portfolios that they now have to give a second thought about.

Maybe if the registrant had at least developed a 1 to 5 page static site that talked about the canary bird, all of that could have been avoided. At least with a site up, they could of had firmer ground to stand on in defense of cybersquatting showing they had an intent to use the domain other than to infringe or profit off a TM holder.

If nothing else, this ruling should encourage more domainers to develop their questionable domains that have more invested as part of a protection plan in the event it is ever put into question like the above case was.

The domain industry is definitely changing, that's for sure. Things are becoming way more strict and regulated all over the place to compensate and prepare for it all.

Eric Lyon

Cybersquatting reference​

[ame="http://en.wikipedia.org/wiki/Cybersquatting"]Cybersquatting - Wikipedia, the free encyclopedia[/ame]

 

[lennco]

Interesting. Looks like they are finally cracking down big time on the whole Cybersquatting law that hasn't been enforced very strongly over the years. While this case looks to be a bit extreme, I think the nail in the coffin was when the registrant tried to sell the domain for profit to the TM holder when they contacted him about it. The 10 years of being parked / undeveloped didn't help the registrant at all since it basically enforced the notion that there was no intent to develop and all the intent to squat for resale / profit.

It may or may not have played out differently with a 3 judge panel since 3 opinions would be in play, however I think that the new tld's coming soon and the heightened media frenzy with TM / IP right issues in the domain industry, these kind of rulings are going to become more frequent. Which I agree with the first 2 posters, and will be scary for many people with thousands invested in portfolios that they now have to give a second thought about.

Maybe if the registrant had at least developed a 1 to 5 page static site that talked about the canary bird, all of that could have been avoided. At least with a site up, they could of had firmer ground to stand on in defense of cybersquatting showing they had an intent to use the domain other than to infringe or profit off a TM holder.

If nothing else, this ruling should encourage more domainers to develop their questionable domains that have more invested as part of a protection plan in the event it is ever put into question like the above case was.

The domain industry is definitely changing, that's for sure. Things are becoming way more strict and regulated all over the place to compensate and prepare for it all.

Eric Lyon

Cybersquatting reference​

Cybersquatting - Wikipedia, the free encyclopedia

This could easily send the whole domain and parking industry in a tail spin.

I for one have never agreed with Cybersquatting laws.

Imagine if those same type of laws applied to land owners.
Imagine a big company saying since this particular land owner has never developed this piece of land that they should now give up their rights to it.
Amazing :td:

 

[Name Trader]

It's hard to imagine that canary.com never had any "oilfield drilling services" ads on it's parked page over the years. And if it did, then the respondent is dead in the water. This would definitely top any false statements made about "no legitimate rights to the domain" made by the panelist.

This case also suggests, that for valuable domains you should always opt for the three man panel, to avoid these one person panel weird decisions, and employ a decent domain lawyer (which I never checked whether the respondent did or not).

 

[Eric Lyon]

Imagine a big company saying since this particular land owner has never developed this piece of land that they should now give up their rights to it.

Sadly, that's actually a tactic some governments use to acquire land for government development projects. Large corporations use bully tactics to get undeveloped land they want to develop on and many times find loopholes in laws to trigger a government seizure so that the corporation can then bid on the land when it hits the government liquidation auction.

Such auctions happen daily all over the United states (not sure about other places). You can find several properties that were seized by the government for health code violations, property tax default, and unfit living conditions on sites such a this with a $1 no reserve + $500 closing costs: http://www.bid4assets.com/marketing/absolutehomes/ (I actually bought a house off that site in Ohio several years ago from a IRS seizure auction).

When dealing with just about any laws concerning ownership rights, there's always going to be a well paid attorney looking for loopholes that can benefit a client. Capitalism is of course a greed spawning hierarchy that becomes very addictive to some. Some people / Corporations will do anything and spend what ever it takes to acquire what they want. That doesn't make it right, but it makes it a scary reality.

Eric Lyon

 

[lennco]

It's hard to imagine that canary.com never had any "oilfield drilling services" ads on it's parked page over the years. And if it did, then the respondent is dead in the water. This would definitely top any false statements made about "no legitimate rights to the domain" made by the panelist.

This case also suggests, that for valuable domains you should always opt for the three man panel, to avoid these one person panel weird decisions, and employ a decent domain lawyer (which I never checked whether the respondent did or not).

Maybe they are saying, we had better pay them the extra $3k if we want to keep our domains

 

[alien51]

I don't think the opinion of one Judge, automatically becomes the rule evenif he is wrong. We have seen many cases already, where rulings directly contradict with past rulings. It's a mockery of a justice system. There's not even an appeal process in place, to correct a Judge who is mistaken.

I think it's about time that Domainers BAND TOGETHER into a legitimately recognized institution. Something like a Union, recognized by domaining policy makers, and with Union attorneys. The Union will protect our rights, granting that all Union members would have to adhere to Union rules governing fair use of domains for domaining purposes.

Maybe some of you guys who are well connected with powerful Domaining players, can kick off something. You could ask the Domaining institution players (like SEDO) to strengthen us as well, since we drive their business.

In fact, there could even be Union fees collected from all members. The important thing is, there is a powerful voice out there who can say that a Judge was wrong.

 

[Eric Lyon]

I think it's about time that Domainers BAND TOGETHER into a legitimately recognized institution. Something like a Union, recognized by domaining policy makers, and with Union attorneys. The Union will protect our rights, granting that all Union members would have to adhere to Union rules governing fair use of domains for domaining purposes.

Maybe something like NAPDR (National Association for the Protection of Domainers Rights)? That doesn't exist, it was just a wild card to toss in the hat for a brandable acronym like the NAACP is. I think the first members of such a movement / union should be IP rights attorney's (If you actually pursue the idea).

Eric Lyon

 

[lennco]

I don't think the opinion of one Judge, automatically becomes the rule evenif he is wrong. We have seen many cases already, where rulings directly contradict with past rulings. It's a mockery of a justice system. There's not even an appeal process in place, to correct a Judge who is mistaken.

I think it's about time that Domainers BAND TOGETHER into a legitimately recognized institution. Something like a Union, recognized by domaining policy makers, and with Union attorneys. The Union will protect our rights, granting that all Union members would have to adhere to Union rules governing fair use of domains for domaining purposes.

Maybe some of you guys who are well connected with powerful Domaining players, can kick off something. You could ask the Domaining institution players (like SEDO) to strengthen us as well, since we drive their business.

In fact, there could even be Union fees collected from all members. The important thing is, there is a powerful voice out there who can say that a Judge was wrong.

That's my favorite post of the day :tu:

 

[Name Trader]

I thought this had already been tried. I forget the name but it evolved into a organization which only protected the big players interests like Sedo & GoDaddy (well they were paying the majority of the dues). I think the organization is still around basically lobbying ICANN.

 

[thebutler]

If Rick Schwartz had owned it I doubt he would have lost the domain. Bad strategy by the domain owner.

 

[alien51]

I would have thought that the reason why such "Union" for Domainers does not exist, is because the big-timers would view it as a threat to competition.

We operate like pirates (the one-eye patched ones), watching only our own backs, and will just feel sorry for those who got hanged. The more people you attract to Domaining, the smaller the pool becomes for fishing the good domains.

For example, Domain solicitation letters used to work in the old days. But now that too many people are into domaining, they have ruined the craft. Everyone else are being tagged as spammer, no distinction.

Domaining is a battle for resource. There is probably zero motivation for "group protection", but rather "monopoly protection". Which is probably why big players who can afford expensive lawyers, have no interest encouraging others to enter the business and squeeze the resource pool.

I'm just bringing up the other side of the coin.

 

[Kate]

I think it's about time that Domainers BAND TOGETHER into a legitimately recognized institution. Something like a Union, recognized by domaining policy makers, and with Union attorneys..

That's what ICA does, and it's supported and financed by some of the largest players in the industry.
But for most domainers the stake are not worth it.

A good article:
http://www.domainarts.com/2011/11/04/who-cares-about-the-ica/

 

[alien51]

Thanks for the link. It's the first time i've read about it.

So i wonder why the ICA is not all over the place, everytime wrong decisions come out of UDRPs ??

Ohh, perhaps i am mistaken about this Canary issue. That the mere 'act" of parking a domain (not just the ads that show up), is INDEED proof of bad faith usage.

I don't see SEDO going all over the place blasting this decision. Why are they offering parking to domainers, when a Judge says parking of domains..... ANY DOMAINS..... is bad faith ???

Maybe it is really true....Domaining is every man (or alien), for himself.

 

[HeyNow]

One would think that for $7 million the registrant would have known to have a domain/trademark lawyer respond to all inquiries. One would think.

 

[HeyNow]

Thanks for the link. It's the first time i've read about it.

So i wonder why the ICA is not all over the place, everytime wrong decisions come out of UDRPs ??

Ohh, perhaps i am mistaken about this Canary issue. That the mere 'act" of parking a domain (not just the ads that show up), is INDEED proof of bad faith usage.

I don't see SEDO going all over the place blasting this decision. Why are they offering parking to domainers, when a Judge says parking of domains..... ANY DOMAINS..... is bad faith ???

Maybe it is really true....Domaining is every man (or alien), for himself.

In my humble opinion, SEDO will offer anything to domainers in the quest to make profit off of someone else's property, the domain name. If you lose your domain in a UDRP because you merely parked it with SEDO, no sweat off SEDO's balls, they lost perhaps only few bucks in parking revenue. This is yet another reason to refrain from using SEDO, in my humble opinion.

 

[surprise]

To be honest guys , $7 M is a bit extreme for such name , one thing for sure if you own a premium domain you may consider developing it just in case .

 

[Name Trader]

Thanks sdsinc. That was the organization I was thinking of. Also, nice read.

 

[Dave_Z]

This could easily send the whole domain and parking industry in a tail spin.

I for one have never agreed with Cybersquatting laws.

Imagine if those same type of laws applied to land owners.
Imagine a big company saying since this particular land owner has never developed this piece of land that they should now give up their rights to it.
Amazing :td:

The idea behind those cybersquatting laws is to prevent the domain name's registrant from commercially exploiting a party's trademark. Those laws don't excuse the party from claiming all and any domain name variations of their mark, albeit some idjit trademark holders try.

(It's a shame that UDRP doesn't have any means of appeal, other than disputing the decision in a court of mutual jurisdiction. Something like that.)

I wish there's indeed an accurate English translation of that UDRP decision, although some attempts (i.e. Google's translation) give some ideas what caused the dispute to be decided as is.

 

[Ms Domainer]

*

ICA wanted small-time domainers to pay dues, but as silent members with no voice.

I didn't like that idea at all and took a pass because I knew that only the interests of the major players would be protected.

*

 

[alien51]

The trend i am seeing, is End Users trying to trademark the name to establish "first use in commerce", knowing that the domain is being held by a domainer and unused. The strategy appears to be to kill the potential usage of the domain, and thereby making it a turn-off for other potential buyers for that domain.

Something like, you can no longer sell the domain because the "usage" has become part of a trademark by someone else. This applies for domains that are "brandable generics" of the two-word combination types that are potentially descriptive of the niche it is in.

 

[Name Trader]

I successfully defended a UDRP recently. The claimant filed by himself and was basically a moron. But you never know how it will go with a 1 person panel. I took legal advice and the best they could say was 50:50. IMHO, the claimant tried to do just what you say, alien51. But where it all falls down is the usage being the trademark, which means any non-trademark usage is legitimate. His trademark usage was so way off-base, that I shouldn't have trouble selling the domain to somebody else.

But this game is only possible for someone with "reasonably" big pockets. TM Application $1000, UDRP $1600, Start website/business (even cheaply) $1000. You also need to have reasonable knowledge of trademarks and the UDRP process. So it's quite expensive, just to be vindictive.

Don't ask me anything about the UDRP case

Also. The thing about "brandable generics" is that they have multiple uses. It's unlikely that a TM would be broad enough to cover all it's uses. But it could spoil some.

 

[alien51]

I took legal advice and the best they could say was 50:50.

How much did you pay for legal? I hate expenses like this which are not of your own making. Someone threatens you, and then costs you money when the threat fails.

Also. The thing about "brandable generics" is that they have multiple uses. It's unlikely that a TM would be broad enough to cover all it's uses. But it could spoil some.

That's true. However, they would have shutout the usage bracket for the ones they have been granted a trademark. Happened to me quite a few times. No UDRP was filed, but now i can't use the domain for that specific niche. Or potential buyers who search the database usually get scared when they find a TM match, without even thoroughly analyzing the "scope" of that TM. They'll just skip your domain and find something else.

 

[Name Trader]

$300. It's part of doing business, defending your domains from UDRP claims (if you want to keep the domain and don't want to be branded a cybersquatter). IIRC, they wanted $3500 to defend the case for me. So you could look at it that I saved $3300 But I know what you mean