How to lose a $175,000 domain name in a UDRP

[Arpit131]

Company loses Halifax.com after trying to get Bank of Scotland to buy the domain name.

A company in the United Kingdom just lost a domain name it paid $175,000 for in a UDRP. It should be viewed as a lesson on what not to do with a domain name that has both a generic/geo value as well as that of a brand.

Diversity Network acquired Halifax.com in September 2015 for $175,000 and then proceeded to make a series of stupid attempts to get Bank of Scotland, which operates a financial services company called Halifax, to buy the domain name.

Diversity Network then reached out to Bank of Scotland offering Halifax.com for sale. It said it was preparing to use the domain names, and that it was receiving lots of emails about problems with logins to the Complainant’s service and added that this must be a security concern for the bank.

It then proceeded to create a site at Halifax.com titled “Halifax Financial Services Business Listings” with a message “We are Halifax.com the official financial services directory for the UK.”


Source

 

[Wannabean]

Insane.

 

[Kate]

As usual, more money than common sense in this industry.
Reminds me of the epic octopus.com ruling.
Well deserved alas.

 

[Recons.Com]

They just did a demo of what not to do...
Darwin prize well deserved...

 

[heavend]

never mind, great article - very funny

 

[james haw]

I was ok with them at first, I'd buy that to re-sell as there are more things "Halifax" can legitimately be than the just the bank, there's a huge city for starters. I thought reaching out to the bank was their first bad move, but then I read

It then proceeded to create a site at Halifax.com titled “Halifax Financial Services Business Listings”

And changed my mind and think they deserve the loss.

If nothing else it could be construed that they were trying/going to scam people.

Wonder if the bank were preparing a potential offer before that stupid move? Deep pockets end user too for a perfect domain.

 

[heavend]

it's crazy that people with so much cash to spare - have no lawyers or business advisers. I still think something in this story doesn't' make sense. Not sure what - we don't know all the facts - as if this is all the facts - these guys can apply for World Most Stupid Businessmen trophy

 

[LucidDomains]

Lol. How ridiculously stupid.

If they made a site about the city Halifax in Canada and then tried to market the domain they might have stood chance.

 

[Fliper]

These tactics must have worked previously for the company. In my case I willnever buy it ever because the term halifax has many active trademarks. Maybe I'm doing something wrong? Thanks for the news.

 

[RozasMD]

Sounds so absolutely crazy and lacking common sense that it feels like something is missing. It simply can't be true.

 

[Cdomains]

You have got to be crazy to ever invest in trademarked domains or try to sell a domain to a company where there are few other companies with the same name.

Always check trademarks before purchasing, and avoid trademarked domains like the plague.

 

[Cdomains]

One thing that has always bothered me about UDRP's is this-

What if a company searches for domain names and finds one they like - one they did not think of themselves but found on a site for sale.

Then they start a company with the same name and soon after try to get that name with a UDRP suit claiming it is their unique name.

How can we as domainers fight against the possibility of this happening.

To the people who decide the UDRP, how can we prove they got the idea for the name from us , started a company with the name, and now are trying to steal it.

 

[heavend]

One thing that has always bothered me about UDRP's is this-

What if a company searches for domain names and finds one they like - one they did not think of themselves but found on a site for sale.

Then they start a company with the same name and soon after try to get that name with a UDRP suit claiming it is their unique name.

How can we as domainers fight against the possibility of this happening.

To the people who decide the UDRP, how can we prove they got the idea for the name from us , started a company with the name, and now are trying to steal it.

In reality there is no 100 % protection - ever. Specially for small or medium companies. Larger companies have funds to hire lawyers, etc - smaller ones are stuck... There is nothing you can do. In the same time - this can happen in any business. Anyone can go to court against anyone at anytime and if you think you are protected, well - you are protected as long as you can hire better lawyer then someone who is after you....

 

[techname]

I can only guess that their desperate measures were due to the fact that the Bank of Scotland was probably the only end-user that they could see would be willing to pay more for the name than they had.

 

[james haw]

Then they start a company with the same name and soon after try to get that name with a UDRP suit claiming it is their unique name

It's simple to prove your domain was registered before the trademark date, so as long as you don't start using your domain in some way related to the new business you should be fine.

 

[Cdomains]

It's simple to prove your domain was registered before the trademark date, so as long as you don't start using your domain in some way related to the new business you should be fine.

There have been so many unfair UDRP cases lately. Just go to DomainNameWire and listen to the podcasts and read the blog.

The UDRP authoritys do not seem to care what is right or fair. Their decisions seem to be arbitrary.

They pretty much do whatever they want and we are powerless.

 

[techname]

Found this useful overview by WIPO of some of the views and decisions of UDRP panels that might answer some questions.
http://www.wipo.int/amc/en/domains/search/overview2.0/

 

[HUKU]

I think you could easily sell a lobotomy to the foolish owner, provided you explained to them that you will only sell it to them if they don't have any IP rights on lobotomy services.

 

[deez007]

Bwhahaha thanks for sharing this. It was a funny read indeed... talk about throwing away $175k ....

 

[DomainVP]

I haven't read the UDRP yet, but the only thing that they did that was egregiously stupid was to put up a site about "Halifax Financial Services Business Listings".

They could have legitimately claimed use of this domain for numerous 'generic' purposes; but these clowns decided to create a financial services site and then try to sell it to a bank... dumb, dumb, dumb.

This was probably the most damming part of the UDRP, because it just screams bad faith through attempted confusion of brand.

There have been so many unfair UDRP cases lately.

I disagree. There are many cases when domain owners don't respond or are just so unfamiliar with UDRP procedures that they set themselves up for failure from the start. Many view these as 'unfair' rulings, but when you actually read the findings they are mostly rooted on sound procedure.

Every domain investor should Read UDRP case law and know it like they know their own address.