Female first name Lidia.com transferred at UDRP

[DubDubDubDot]

Another disturbing transfer.

http://www.udrpsearch.com/naf/1627997

The complainant was chef Lidia Bastianich, who sells cookware under the Lidia brand.

Lidia is a female first name and the domain owner was not violating the Lidia cooking TM. Reading through the ruling it seems as though the domain owner lost the domain pretty much because they weren't using it.

This ruling and others like it point to a UDRP culture among some panelists that encourages complainant favoritism. If this was my domain I'd get this into the US courts in time to stop the UDRP transfer order. There is no TM violation here.

 

[DNGear]

UDRP - USA Domain Recovery Panel

 

[Kate]

I read the decision. First of all, this is not exactly a first. We have seen similar decisions before. Now, just because the complainant make a lot of dubious claims such as: lack of usage or private whois registration = suspect, that doesn't mean the panelists must agree.

I think the problem here is that the defense was very poor. The respondent shot himself in the foot and did not give one single valid reason why he bought this domain. Basically he did so just because he feels like it, by virtue of the first come first served principle ("The adoption of the word LIDIA has not been explained by Respondent in any manner whatsoever."). Second, he suggests that the TM does not carry much weight because it's not registered in China. This is clumsy defense, and the wrong way to approach a UDRP. He should have retained legal counsel and then the outcome could have been very different.

When you are challenged by a UDRP, the onus is on you the respondent to justify the registration. If you have no counter-arguments you'll lose.

Also, the fact that the language of the ruling was English may have played against the respondent. If you are not comfortable with the language, it is one more reason not to play the lawyer but retain the services of a qualified professional.

 

[Josh R]

This is ridiculous.
Completely unacceptable.

 

[pablohc86]

I totally agree with @Kate, you can't hope to win a UDRP against a TM holder with a similar defense.
You have to demonstrate real interested and provide some plans on it, also if with no real proof at least with some ideas you have. Only saying that you plan to use in in the future is not enough.
Liu played really bad his cards..

 

[yes ofcourse]

I am not an lawyer, could you please explain to me the following:

1. Why you would need to explain your motives? Is there really a law, a rule, which says you must explain your motives, when or after you reg. domain?

2. How does specific TM apply territories in domain law? I assume if Coca-Cola would not have a trade mark in China and if some guy would start to use their brand, Cola could be able to run a complaint against him in China only. or I am wrong?

 

[Kate]

1. Why you would need to explain your motives? Is there really a law, a rule, which says you must explain your motives, when or after you reg. domain?

You don't have to justify your domain registration, until you are challenged by somebody
For example at Wipo. If a TM holder makes a number of allegations against you and you have no counter-arguments to present, you will likely lose.

2. How does specific TM apply territories in domain law? I assume if Coca-Cola would not have a trade mark in China and if some guy would start to use their brand, Cola could be able to run a complaint against him in China only. or I am wrong?

Coca-Cola is a universal TM. Because it is so widely known, the brand can be enforced even where there is no formal TM registration.
And it doesn't matter where you live, even if you live in China and own a .com it can be seized through UDRP. With a .cn domain it would be different (probably another dispute resolution procedure).

Note that UDRP is an arbitration procedure. Going to court is another option, but usually going through WIPO is easier and cheaper.

 

[yes ofcourse]

So, if I understand correctly: Chinese guy went to arbitration process with Linda and he therefor accepted the end result as final and this is why he lost domain?

 

[DomainVP]

Not shocking at all... completely poor defense.

Time and time again domain investors lose their domains because of inadequate representation.

Your UDRP defense starts TODAY! RIGHT NOW! Protect yourself before some desperate company comes along with a UDRP out of the blue.

Most of my consultancy work is for domain buying strategy and early portfolio building, but a great deal of my consultancy work comes from UDRP protection consultations - clients who have valued domain names and want to know how to protect them in advance.

You protect yourself through education... take a few months to read 50 - 100 UDRP cases. Once you see what works and what doesn't, you will understand what you need to do.

With this case there are four main issues that I spot, where the respondent failed to protect themselves.

#1 - PANEL OF 1
Always ask for a panel of three when defending a UDRP. Yes it is going to cost you about $3000, but if some company is taking you to UDRP at the cost of $1500 + representation, you clearly have a valued domain to someone - protect it.

A panel of 1 allows a single person complete control of your fate - you don't want that. A panel of three will also keep the other panelists in check in case there is a biased panelist, which there often is.

#2 - NO USE OF DOMAIN

This is the most pathetic part of the story, because did you know that "USE" can be demonstrated if you just simply set up an eMail address. Using a domain for "eMail services" has won many UDRP cases.

Not doing something as simple as setting up eMail and displaying it is just lazy.

#3 - RESPONDENT USED "FIRSTSIES" AS A DEFENSE

"Respondent submits that the registration of the domain name should follow “first come, first registration” principle and that anyone is entitled to register his/her favorite word or words combination."

This is not a valid defense, it barely holds up in a preschool playground.

#4 - BEING UNAWARE OF TRADEMARKS

Always be aware of trademarks, at least every six months go over your domain holdings and check for an existing TM in your region.

The respondent could have easily just said that the complainant had no TM rights in their area, and that there was an intent to use for 'x' project - but they didn't.

 

[robert widener]

the domain owner was robbed of his domain, plain & simple.