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.

 

[jberryhill]

How about a .com owner going after a .ai name?

I received this decision this morning.

https://www.adrforum.com/DomainDecisions/2157805.htm

 

[MilkyWay]

How about a .com owner going after a .ai name?

I received this decision this morning.

Show attachment 279193

https://www.adrforum.com/DomainDecisions/2157805.htm

Great result and good response from you.

The decision mentions complainant reached out to respondent initially to purchase. Would it have been a harder case to defend had respondent reached out to complainant first?

 

[jberryhill]

Would it have been a harder case to defend had respondent reached out to complainant first?

The basic proposition of the UDRP is "Why did the registrant register this domain name? Was it because of the trademark or was there some other reason?"

This is broken down into three things the Complainant has to prove: 1. the domain is identical or confusingly similar to a trademark, 2. the registrant has no legitimate rights in the domain name 3. the domain was registered and used in bad faith (relative to the trademark).

In this instance, the complaint failed on all three grounds, so it is difficult to say. You have to get past the trademark gate before getting hung up on the remaining two elements.

But as a general proposition, one of the things a panel can consider under the third, "bad faith", element is whether there are:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"

So, just considering that in isolation from everything else, if you have acquired a domain name and then you expressly try to sell it to someone who believes they have a relevant trademark, then it is more likely for a panel to believe that was the reason why you acquired the domain name, than if the trademark claimant came to you to buy it.

 

[g9xmouse]

The basic proposition of the UDRP is "Why did the registrant register this domain name? Was it because of the trademark or was there some other reason?"

This is broken down into three things the Complainant has to prove: 1. the domain is identical or confusingly similar to a trademark, 2. the registrant has no legitimate rights in the domain name 3. the domain was registered and used in bad faith (relative to the trademark).

In this instance, the complaint failed on all three grounds, so it is difficult to say. You have to get past the trademark gate before getting hung up on the remaining two elements.

But as a general proposition, one of the things a panel can consider under the third, "bad faith", element is whether there are:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"

So, just considering that in isolation from everything else, if you have acquired a domain name and then you expressly try to sell it to someone who believes they have a relevant trademark, then it is more likely for a panel to believe that was the reason why you acquired the domain name, than if the trademark claimant came to you to buy it.

So, is the fact that the trademark holder has proactively inquired about the price an advantageous factor for the domain name holder in the arbitration case?

 

[MilkyWay]

So, is the fact that the trademark holder has proactively inquired about the price an advantageous factor for the domain name holder in the arbitration case?

I would think not. A trademark holder inquiring about the price of (what they think is) an infringing domain seems like a logical cost evaluation step when determining legal measures. A complainant can still prove all three elements of the UDRP if those negotiations fail. But jberryhill would know more.

 

[jberryhill]

So, is the fact that the trademark holder has proactively inquired about the price an advantageous factor for the domain name holder in the arbitration case?

This kind of fact pattern comes in a number of variations. A lot of it depends on how the domain registrant responds to inquiries. It is always a good idea to explain why one believes a price is justified. For example, take a look at what happened here:

https://www.wipo.int/amc/en/domains/decisions/text/2019/d2019-0229.html

The correspondence exchanged between the Parties prior to the dispute shows that it was initiated by the Complainant and that the Respondent did not offer the disputed domain name specifically to the Complainant but only indicated a price in response to the Complainant’s question about a possible sale of the disputed domain name. In its response to the Complainant, the Respondent stressed out that its valuation of the disputed domain name was based on its dictionary meaning in the French language.

Explaining why a domain name is valuable is not just good salesmanship. It also establishes a record of WHY you believe the domain name to be valuable.

But there is an entire category of what are called "Plan B" cases where the complainant first inquired - typically through an anonymous agent - and offered a substantial price. Then, when that price was not accepted, they proceed to file a UDRP.

https://www.wipo.int/amc/en/domains/decisions/text/2012/d2012-2139.html

The Panel also notes that sale negotiations, especially if initiated by the complainant, are not inherently bad faith. (See Beehive.com, LLC v. Alliance Capital Management, WIPO Case No. D2012-2003, stating that “the four (4) non-exclusive criteria of the Policy… do not include elements regarding any appraised value for the Disputed Domain Name, the relative importance of the Disputed Domain Name between the Parties or a refusal to reduce an offered sale price.) In the present case, not only did the Complainant initiate the negotiations but they occurred years after the Respondent’s registration of the disputed domain name.

https://www.wipo.int/amc/en/domains/decisions/text/2013/d2013-1691.html

The fact that the Respondent is offering the disputed domain name for sale can not as such be deemed to indicate that the disputed domain name was registered, or is being used, in bad faith. This is particularly the case when the negotiations for sale of a domain name have been initiated by the Complainant.

All of those cases have another thing in common.

 

[g9xmouse]

This kind of fact pattern comes in a number of variations. A lot of it depends on how the domain registrant responds to inquiries. It is always a good idea to explain why one believes a price is justified. For example, take a look at what happened here:

https://www.wipo.int/amc/en/domains/decisions/text/2019/d2019-0229.html

The correspondence exchanged between the Parties prior to the dispute shows that it was initiated by the Complainant and that the Respondent did not offer the disputed domain name specifically to the Complainant but only indicated a price in response to the Complainant’s question about a possible sale of the disputed domain name. In its response to the Complainant, the Respondent stressed out that its valuation of the disputed domain name was based on its dictionary meaning in the French language.

Explaining why a domain name is valuable is not just good salesmanship. It also establishes a record of WHY you believe the domain name to be valuable.

But there is an entire category of what are called "Plan B" cases where the complainant first inquired - typically through an anonymous agent - and offered a substantial price. Then, when that price was not accepted, they proceed to file a UDRP.

https://www.wipo.int/amc/en/domains/decisions/text/2012/d2012-2139.html

The Panel also notes that sale negotiations, especially if initiated by the complainant, are not inherently bad faith. (See Beehive.com, LLC v. Alliance Capital Management, WIPO Case No. D2012-2003, stating that “the four (4) non-exclusive criteria of the Policy… do not include elements regarding any appraised value for the Disputed Domain Name, the relative importance of the Disputed Domain Name between the Parties or a refusal to reduce an offered sale price.) In the present case, not only did the Complainant initiate the negotiations but they occurred years after the Respondent’s registration of the disputed domain name.

https://www.wipo.int/amc/en/domains/decisions/text/2013/d2013-1691.html

The fact that the Respondent is offering the disputed domain name for sale can not as such be deemed to indicate that the disputed domain name was registered, or is being used, in bad faith. This is particularly the case when the negotiations for sale of a domain name have been initiated by the Complainant.

All of those cases have another thing in common.

Very valuable information, have a nice weekend.