UDRP Looking for UDRP Cases: .CO Domain Holder vs .COM Domain Holder

[g9xmouse]

Hi everyone,


Does anyone have any UDRP case examples where the holder of a .CO domain name filed a complaint against the holder of the corresponding .COM domain? I'm doing some research and would greatly appreciate any case references or insights you can share.


Thank you in advance!

 

[cyberlawyer]

Hi everyone,


Does anyone have any UDRP case examples where the holder of a .CO domain name filed a complaint against the holder of the corresponding .COM domain? I'm doing some research and would greatly appreciate any case references or insights you can share.


Thank you in advance!

Hello, one of the case I handled for a client was 3L - vgw.com in 2023. The complainant has an official website at www.vgw.co. I hope this information helps.

 

[g9xmouse]

Hello, one of the case I handled for a client was 3L - vgw.com in 2023. The complainant has an official website at www.vgw.co. I hope this information helps.

Thank you very much for your help. Do you know of any .co domain name holders who have obtained the corresponding .com domain name through udrp?

 

[cyberlawyer]

Thank you very much for your help. Do you know of any .co domain name holders who have obtained the corresponding .com domain name through udrp?

I can't recall right now.

Also, here is the link to the VGW.com WIPO decision: https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-0345.pdf

 

[jberryhill]

I’m curious about the question. UDRP disputes do not present as “someone with .co wants the .com”.

Typically, a UDRP complainant will have a domain name somewhere, often in a ccTLD of some kind.

For example, malo.it went after Malo.com:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-5063.pdf

The folks who have Brunet.ca went after Brunet.com

https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-2935.pdf

The folks who have waterland.be went after waterland.com

https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-0666.pdf

But whether a UDRP complainant has a domain name in .co has nothing to do with whether or not they would be successful going after a .com. A pretty common scenario would be where someone started a business using a distinctive mark, but the .com was already registered, so they settled for a .co.

In that situation, they would be unlikely to win against the original .com registrant, because they could not show that the domain name was acquired because of their mark.

However, if the domain name changed ownership AFTER their mark was established, and there is a reason to believe the new owner acquired the domain name because of the trademark, then the complainant would have a good shot at winning.

But none of that has anything to do with whether they own a .co, .uk, .de or anything other ccTLD name.

 

[g9xmouse]

Thank you for sharing, these cases are great. But now most domain name privacy protection is done very well, it seems difficult to confirm when all changes have occurred, even some WHOIS history tools, the data found is still in the privacy protection state.

 

[jberryhill]

But now most domain name privacy protection is done very well, it seems difficult to confirm when all changes have occurred, even some WHOIS history tools, the data found is still in the privacy protection state.

I guess you are trying to say that the complainant would not have a basis for claiming an ownership change, but that's not as simple as you might think.

Some UDRP complainants will pick up on whether the name was sold by checking namebio or other sources. Also, they will look at any change in registrar, nameservers, etc., and allege that it was the result of an ownership change. Absent the respondent showing up and showing that they had it earlier - such as by a renewal payment, confirmation of a registrar change, or whatever, then the complainant will typically be believed if they merely allege a secondary indication that the ownership may have changed.

In other words, if it was under Privacy Service #1 at Registrar A, and then moved to Privacy Service #2 at Registrar B, the complainant will allege that it shows a change in ownership of the domain name. It is then up to the respondent to show otherwise. This is among the many reasons why I've been telling people not to use WHOIS privacy for more than 25 years.

And, if your point is along the lines of 'since the complainant cannot prove an ownership change, I will lie about having owned it earlier,' that's not a good long term strategy.

 

[g9xmouse]

In your opinion, is the timing of the change of ownership a very important factor in the UDRP?

I guess you are trying to say that the complainant would not have a basis for claiming an ownership change, but that's not as simple as you might think.

Some UDRP complainants will pick up on whether the name was sold by checking namebio or other sources. Also, they will look at any change in registrar, nameservers, etc., and allege that it was the result of an ownership change. Absent the respondent showing up and showing that they had it earlier - such as by a renewal payment, confirmation of a registrar change, or whatever, then the complainant will typically be believed if they merely allege a secondary indication that the ownership may have changed.

In other words, if it was under Privacy Service #1 at Registrar A, and then moved to Privacy Service #2 at Registrar B, the complainant will allege that it shows a change in ownership of the domain name. It is then up to the respondent to show otherwise. This is among the many reasons why I've been telling people not to use WHOIS privacy for more than 25 years.

And, if your point is along the lines of 'since the complainant cannot prove an ownership change, I will lie about having owned it earlier,' that's not a good long term strategy.

 

[jberryhill]

In your opinion, is the timing of the change of ownership a very important factor in the UDRP?

The UDRP requires the complainant to show that a domain name has been "registered and used in bad faith" in relation to the trademark.

It is inherent in that requirement to show the domain name was "registered in bad faith", so in order for that to have happened, either:

(a) the trademark had to exist when the respondent acquired the domain name, or

(b) the respondent had to have been acting on some kind of insider information or publicity attendant to a product/service launch announcement.

And by saying 'the trademark had to exist' I do not mean 'trademark registration' solely, since most domainers are under the incorrect impression that registration of the trademark is a requirement.

So, yes, timing of the domain acquisition is frequently the difference between a win or a loss for the complainant.