discuss UDRP & Premium Domains

[SSM]

I've searched and read a lot of posts but I'm still confused about certain aspects of UDRP and specifically the risks involved when purchasing premium domains with the intent to flip.

I understand when the domains in question are similar to a well known brand, i.e. Apple, Facebook, Amazon etc. That makes perfect sense. What I don't understand is when the words and more generic or specific, and claims are made. An example:

Towels.com comes up for sale and is purchased by a domain flipper. However, Towels.co.uk has been going for 10 years. A very specific word that is more than likely to be used for selling towels. However, does the latter then have a good chance of claiming towels.com via the UDRP process? (Note: towels is an example and not a domain I own nor am looking to purchase).

If the .co.uk owners were able to pursue and win a URDP case, purely based on having built a brand over a number of years, how is it possible that any one word dot coms can be sold without imposing huge risks?

These days everything is either A) Trademarked or B) registered on other extensions.
If the word is more generic, its easier to understand (to an extent) as the associated word could be used in a different capacity.
I.e. Monday.com could be a SaaS website whilst Monday.co.uk could be setup as a news website. But for words that are more
specific, how big are the risks and if they're that big, how is it these domains are ever sold rather than just thought via UDRP?

Another example would be domain.com vs domains.com - Surely as its a generic word, one cant purse another?
The reason I ask, isnt due to trademark per-se but rather threads I have read on here and elsewhere that indicated successful UDRP claims against owners because a domain was purchased with the intent of selling, and therefore wasnt in good faith.

You can do this with real estate, but with domains its a big issue? #Confused.

 

[Surya Giri Kurniawan]

The key of UDRP is registered in Bad Faith.

Bad faith :

- registered to blackmail brand owner, targeted to special brand to pay much money for protection
- making website confusing to brand customers as officially brand's website by simillar appearance, simillar logo
- using the same name to sell simillar items to the brand products, or making brand official store without permission
- using same name to sell brand competitor's products
- profitting by stolen brand's visitors by selling ads in confusing website with brand's name
- send emails to brand customers with domain name seems from Brand officially office

You know alot of naughty domainers registered domain names like FBlogin.com, GucciBagsIndia.com, Gogle.com, with bad faith.

 

[VadimK]

Look, subject is complicated. Generally speaking, generic words can not be trademarked as such. You can't trademark the word ''dad'' (or ''towels'' at this matter) and prohibit any company or person of using it - that's not how it's work. It should be a name, a brand - ''towels'' is not brand nor the name of the company.

And it should be referred to a certain industry. If you have the name MyApple.com re-selling apple phones (even better-stolen apple phones)), then you are in trouble. However if you have a site MyApple.com selling apples from your garden - most likely you'll be fine. That's pretty much what the previous commentator said as well.

But don't worry too much about the subject. Check your potential names at
https://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk
and stay away from famous company names and abbreviations, that's it.

 

[SSM]

I get that but I'm specifically referring to one word dictionary words.

If someone purchased towels.com and got a broker to sell their domain, said broker could reach out to the owners of towels.co.uk

This would constitue as bad faith, but to me that's crazy as that means every dictionary word, is at risk?

 

[SSM]

Look, subject is complicated. Generally speaking, generic words can not be trademarked as such. You can't trademark the word ''dad'' (or ''towels'' at this matter) and prohibit any company or person of using it - that's not how it's work. It should be a name, a brand - ''towels'' is not brand nor the name of the company.

A better example would be something like hotels.com vs hotels.co.uk

Both would be used for the very similar reasons due to the word (towels wasnt a great example) so is one now able to take action against the other considering its a generic word? If so, most words are at risk?

 

[VadimK]

A better example would be something like hotels.com vs hotels.co.uk

Both would be used for the very similar reasons due to the word (towels wasnt a great example) so is one now able to take action against the other considering its a generic word? If so, most words are at risk?

It's the same company. For all these premium, top-shelve words companies buy tens and hundreds extensions for themselves right away.

Now, what if you buy one tld that no one heard about for this same word ( hotels.thisbeautifulfuckedupworld ) ? Well, that's a hypothetical question. First, you can't resell it, because no one heard of your tld. Second - you can try and see, out of curiosity. But it's useless practically.

You won't be dealing with these words in the foreseeable future. You'll be dealing with combinations, and it's a different story (see my previous post on what to do with each name you are about to buy).

 

[SSM]

I want to make it clear, I am not on about multiple words. There is no attempt at purchasing domains to try and trick users etc.

If hotels.co.uk had been going for years and hypothetically hotels.com was for sale (i.e. it wasn't owned by the same people) are you then at risk buying hotels.com?

I completely understand why multiple words that are misleasing users are at risk. However when you read cases about fox.org being lost (that's a generic word) it makes you wonder.

 

[VadimK]

I want to make it clear, I am not on about multiple words. There is no attempt at purchasing domains to try and trick users etc.

If hotels.co.uk had been going for years and hypothetically hotels.com was for sale (i.e. it wasn't owned by the same people) are you then at risk buying hotels.com?

I completely understand why multiple words that are misleasing users are at risk. However when you read cases about fox.org being lost (that's a generic word) it makes you wonder.

There is no definite answer to your question, even for this specific name (which, again, is owned by the same company). The devil is in the details, what's going on on both sides. That's why you have multiple UDRP cases, arbitrage and highly paid lawyers on both sides for all such cases.

Also, hypothetically - I would definitely buy hotels.com in this case (not talking budget and other aspects, but purely considering risk of arbitrage).

 

[SSM]

There is no definite answer to your question, even for this specific name (which, again, is owned by the same company). The devil is in the details, what's going on on both sides. That's why you have multiple UDRP cases, arbitrage and highly paid lawyers on both sides for all such cases.

Also, hypothetically - I would definitely buy hotels.com in this case (not talking budget and other aspects, but purely considering risk of arbitrage).

Did you mean you wouldn't buy hotels.com?

 

[Surya Giri Kurniawan]

I want to make it clear, I am not on about multiple words. There is no attempt at purchasing domains to try and trick users etc.

If hotels.co.uk had been going for years and hypothetically hotels.com was for sale (i.e. it wasn't owned by the same people) are you then at risk buying hotels.com?

I completely understand why multiple words that are misleasing users are at risk. However when you read cases about fox.org being lost (that's a generic word) it makes you wonder.

If you have a Hotel, let's say your family Hotel you inherited from your Grandparents, and you have money, you can legally buy Hotels.com. As long as your business is a Hotel too, and your website doesn't selling another Hotel offered by Hotel.com, you'll be fine

 

[SSM]

Then how did fox.org lose??

Other generic examples would be if someone owned guns.co.uk and someone else owned guns.com - is one likely to lose to another when its so generic?

If so, all generic words are at risk?

With the exception of Apple, are other generic words such as guns, toys, etc at the same level of risk for domain investors?

 

[Surya Giri Kurniawan]

Then how did fox.org lose??

Other generic examples would be if someone owned guns.co.uk and someone else owned guns.com - is one likely to lose to another when its so generic?

If so, all generic words are at risk?

With the exception of Apple, are other generic words such as guns, toys, etc at the same level of risk for domain investors?

According to the complaint, “The Complainant also asserts that email accounts related to the disputed domain name were used to send fraudulent emails with the goal of phishing information from unsuspecting persons by impersonating Complainant’s employee.” Even if that is true, it does not eliminate the requirement that the registrant registered and used the domain name in bad faith, and I do not think that is the case.

https://domaininvesting.com/fox-org-udrp-decision-is-upsetting/