question Is UDRP Double Dipping Possible?

[Igor Gabrielan]

Is it possible to win a dispute regarding a domain name, drop it, wait for a third party to register it, wait a few years, and again initiate and win the dispute by taking the name away from that third party?
Has this ever happened before?

 

[BaileyUK]

drop it, wait for a third party to register it

This reads like the domain was dropped as a bit of a bait fishing exercise. Which I don't think you meant to imply. Most businesses or individuals (apart from the RDNH judgements) are genuinely looking to protect their Business reputation and status, There must be many historical cases where the actioner filed and won but, doesn't want the domain. Doesn't even want to be associated with it.

The Short answer is that every case is taken on it's merits. From my understanding 'Case Law' is only relevant if it sets a 'Judicial Precedent ' and that wouldn't be the case in a domain dispute. There may well be some nuances or instances that Mr John Berryhill could clarify ie, same respondent repeating his actions as before.. (reregistering the same domain) But these are all imaginary scenarios, surely. You do mention this being a third party.

For some reason I'm having your Bloomberg postings in my thoughts

 

[Igor Gabrielan]

There are some situations in which one issue cannot be considered twice. How is it possible, from the point of view of universal human logic, to abandon a domain for several years, thereby showing disrespect for it, and demand it again?

 

[BaileyUK]

I don't think you should be progressing this in a totally different thread. All I can finally say is your using your own biased logic. We all understand the reasons.

PS, I feel guilty enough about the practice of domaining, We must be the most disrespectful bunch on the planet by Not using our assets in a meaningful and productive way. The vast majority that is.

A dropped or available domain doesn't mean open-house on its usage or intended usage. No matter what the cover-story.

 

[Igor Gabrielan]

Compared to land squatters. Some squatter has staked out a plot of land and does not use it, but pays rent. Another man demanded that this plot be handed over to him and promised to use it effectively. The court gave him the plot. But as soon as the new tenant received the plot, he immediately stopped being interested in it. He didn’t do anything on it, didn’t pay rent to the state. After some time, the authorities took the plot away from him for non-payment. Several years have passed. A third person leased the property from the state. He pays rent regularly, but does nothing on the property. The second person was again indignant and filed a complaint, demanding that the plot be transferred to him.

 

[jberryhill]

Yes, I believe it has happened before. I used to keep track of weird UDRP fact patterns, but it would take me a while to find them.

There are a couple of scenarios where this sort of thing has come up. The first scenario happened a few times during the early days of the UDRP. Unfortunately, the UDRP allows the complainant to request "transfer" or "cancellation". The original drafters of the UDRP didn't uniformly understand how the domain name system works, and they believed there was a way to 'cancel' a domain registration such that it would not be registrable again. The attorneys of some UDRP complainants would request "cancellation", the name would be deleted, and then someone else would register it again. So, then they would have to come back and request "transfer" the second time.

The other scenario was usually some kind of mismanagement. The back end of the UDRP, after a transfer is ordered, is something of a mess, because the person to whom the registrar should take transfer instructions is not always clear. So, you end up with situations where some lawyer in a trademark firm follows the instructions for transferring the domain name to an account that he or she sets up, and the subsequent follow-up to the client doesn't happen for any of a number of reasons. Usually, the lawyer who did the UDRP does not have a direct communication path to the technical people responsible for the domain name. The lawyer's client contact is someone in upper management or marketing, and so there is a lack of coordination between the lawyer holding the domain name, and the tech people who are supposed to take transfer of the domain name. Eventually, the domain isn't renewed, drops, and if it is registered again by someone who uses it in a manner relevant to the trademark then, yes, they'll file another UDRP to get it back.

As far as your personal incredulity is concerned, can you have something stolen from you twice? Yeah, sure. Lots of things go on in large, uncoordinated organizations. The person with the password to the registrar account is fired in a mass layoff, and nobody in management was aware that they fired the person responsible for making sure the domain name gets renewed, etc..

That's actually close to the fact pattern of one of the UDRP's I filed last year. The company hired an outside firm to manage an advertising campaign to promote several products. When the contract expired, the company didn't realize that the outside advertising firm was the registrant of some of the domain names that were used in the advertising campaign. One of the domain names was linked-in from retail sites and on product packaging. It expired and then someone else picked it up and used it for a gambling referral site.

If I have a habit of leaving the keys in my car in my driveway, my car might get stolen. But that doesn't mean I deserve to have my car stolen. If my car is stolen, then I can take action to get it back. If I again leave my keys in the car and it gets stolen again, yes, sure, I can go after the second thief too. After a while, that gets to be an expensive way to get my car back each time, but simply because someone did something wrong to me once doesn't mean I can't go after them if they do something wrong to me a second time.

And, yes, I understand you'll have a whole bunch of silly reasons why it should be open season on any company who mismanages their domain names more than one time, but the bottom line is that if someone engages in intentionally abusive domain name registration for the purpose of exploiting a trade or service mark, then the history of that particular domain name, or whether it has happened before, doesn't matter.

In fact, if you go back and pick a random swath of UDRP cases from a couple of years ago, you'll find that quite a few of them were not renewed after they were transferred. That's usually a result of some combination of (a) the "problem" having been "solved", (b) no one person in particular being responsible for or having the budget to renew recovered domain names, (c) poor follow-up with the lawyers after the UDRP, or some combination of those factors.

One can only wonder why you are asking, though. So, to make it clear, no, you don't get a "free pass" if you go and pick up domain names that were ordered transferred in UDRP disputes and, for whatever reason, were not renewed.

 

[pb]

This reads like the domain was dropped as a bit of a bait fishing exercise. Which I don't think you meant to imply.

I've seen this in Germany. Some companies would just sue anyone who registers "their" domain while not registering it themselves. Actually not "sue", more like send a pre-litigation demand to pay 1000 euro and delete the domain. I don't know if it's still going on or how successful it was (I got one, ignored it and nothing happened).

 

[pb]

There are some situations in which one issue cannot be considered twice. How is it possible, from the point of view of universal human logic, to abandon a domain for several years, thereby showing disrespect for it, and demand it again?

It's not the same case if the parties are different. You can even sue the same entity twice over the same matter if there's some new evidence (vide the recent Trader Joe's dispute).

 

[jberryhill]

One currently pending dispute that might be relevant is:

https://www.wipo.int/amc/en/domains/search/case.jsp?case_id=68570

It looks like the Complainant had the domain name for a couple of years, did not renew the domain name, and has now filed a UDRP dispute to recover it.

 

[Igor Gabrielan]

I was pretty sure that technically you can file as many complaints as you want in combination with neglect of the domain, but could neglect be one of the factors in favor of the current tenant of the domain name? After all, unlike a car, a domain is not owned; it is only rented. If you treated the rented car carelessly, it is unlikely that they will rent it to you again.

 

[jberryhill]

could neglect be one of the factors in favor of the current tenant of the domain name?

Yes. The overall facts are going to matter, but....

https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0041.html

The fact that the Complainant was a prior registrant of the disputed domain name does not mean that the Respondent's subsequent registration was in bad faith. The opposite is true. As the Panel noted in Corbis Corporation v. Zest, No. 98441 (NAF September 12, 2001);

A domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name.

There is an element of "finders keepers, Losers weepers" in this decision. We believe that is as it should be.

https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0087.html

An argument that the domain name in dispute was not registered or is being used in bad faith by the Respondent is that discussed in paragraph 6.3(d) above: namely, that a Respondent who has registered a domain name registration which has previously lapsed should be in a more confident position than the registrant of a previously unregistered domain name. The Panel agrees that in certain limited circumstances the following quote taken from the three-member Panel decision in NAF Case No. 98441 may be correct:

"The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name."

However, since there can be many reasons for a domain name to lapse or be abandoned, and many cybersquatters automatically harvest expired domains, the Panel would be slow to accord that fact per se as compelling.

That second case, for pwc.com was my first three-letter domain case - 22 years ago.

What's weird is that there are also some UDRP cases that say that someone registering an expired domain name should have known that it belonged to the prior registrant - as if there is some way to read people's minds and figure out why they let a domain name go.

 

[Igor Gabrielan]

It seems there was a case where they let google.com go.
But it was quickly returned.
In my case, three years passed.