legal Worst UDRP Decision Of The Year? Panel Gives Away Domain Registered Before TM Was Filed

[News]

A one member UDRP panel has awarded a domain name purchased in 2010, TheLightBlubStore.com, to Lumen Inc. based off a trademark filed in 2011, after the owner wanted to “reselling it for an outrageous profit. Specifically, Respondent offered to sell the disputed domain name for $18,000.00.”

Hon. Carolyn Marks Johnson was the Panelist who found the Complainant had a common law trademark right even though the Complainant did not make that argument or even a statement that they had a common law trademark right.

Complainant owns THE LIGHTBULB STORE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,189,954, registered August 14, 2012, filed Dec. 15, 2011).

Although Respondent’s purchase date of September 27, 2010, predates Complainant’s earliest demonstrated legal rights in the THE LIGHTBULB STORE mark, namely the December 15, 2011, filing date with the USPTO, the Panel found that Complainant’s rights in the mark dated back to the date represented to the federal government in the filing process as 2009, a date that is earlier in time than Respondent’s purchase of the disputed domain name and that therefore a finding of bad faith is not precluded.

Full Article: http://www.thedomains.com/2015/03/1...s-away-domain-registered-before-tm-was-filed/

 

[Maxwell]

Wow, this is bad...

The dates should mean nothing anyway, right? - I mean "The LightBulb Store" is not a made up, brandable word in any way so that should be the end of ever trying to acquiring it through legal means. You can't entirely coin a generic word.

This totally contradicts the case for advertising.com.

 

[domaincandy]

If it was a presumptive bad faith registration to capitalize on someone else's Mark, then then fact that the Trademark hadn't been filed is no defense. In all likelihood, the name was registered with the intent to capitalize on the complainant's business. People try to hide behind lots of things to get around the problem of a bad faith registration. Sometimes it works, sometimes not. I'm sure the facts pointed to a bad faith registration.

I see names dropping every day where the dotcom drops, and someone has a site on the .net. I will often register those. It is a number's game. It is likely technically a bad faith registration for many of those. There are lots of gray areas, but there are very very few totally outrageous UDRP decisions. It is not first come, first served on names.

Just going on what little has been provided, without reading the complaint and discussion, it certainly is NOT as outrageous as you would like to believe. The name doesn't have much value as a stand alone name, and for this guy to hand register it for 10 bucks and then try to get 18K for it shortly after tells you all you need to know about whether it was a bad faith registration. People need to protect their trademarks, but even when they don't, they still have remedies.

 

[DU]

Just going on what little has been provided, without reading the complaint and discussion, it certainly is NOT as outrageous as you would like to believe.

Generally, to have opinions on a decision, there are benefits to reading the details of said decision.
It's as bad a decision as I've ever seen.

 

[domaincandy]

Well, you would have failed Law School, that is for sure. I just read most of it. You either didn't read it, or you have no ability to understand legal terms, theories, and the facts of the case.

If that is the worst UDRP decision you have ever seen, then you need to do some more reading. The ruling makes perfect sense if you have any ability to understand how trademark law works. In the real world, disputes arise every second of the day for huge money, and often times both sides have legitimate arguments. There are winners and losers, and it is rare that you cannot at least craft a reasonable argument for each side. But decisions need to be made. This is real life, not a domain name law class with people sitting in their underwear talking about things they have no experience in.

In this case, the Respondent had a lame defense. The complainant's rights were stronger. End of story.

 

[DU]

Well, you would have failed Law School, that is for sure. I just read most of it. You either didn't read it, or you have no ability to understand legal terms, theories, and the facts of the case.

If that is the worst UDRP decision you have ever seen, then you need to do some more reading. The ruling makes perfect sense if you have any ability to understand how trademark law works. In the real world, disputes arise every second of the day for huge money, and often times both sides have legitimate arguments. There are winners and losers, and it is rare that you cannot at least craft a reasonable argument for each side. But decisions need to be made. This is real life, not a domain name law class with people sitting in their underwear talking about things they have no experience in.

In this case, the Respondent had a lame defense. The complainant's rights were stronger. End of story.

Fair enough - I didn't realize that TM law was just determining who had a stronger case. I'll go back to kindergarten.

 

[DomainVP]

I get ragged on for bringing up UDRP all of the time, but this is exactly why.

This is not a bad decision at all, it's an example of a lazy domainer that does not know important policies.

1) Respondent has no legitimate rights - registration is not a legitimate right.
2) Respondent owned the domain AFTER there were USPTO documents showing first in use dating back to 2009 (respondent acquired it in 2010).
3) Respondent countered with a 'inflated' price when inquired for a domain with some sort of TM history
4) Respondent failed to refute basic prima facie claims made by the complainant
5) Respondent was not using a domain with some sort of TM history
6) Respondent didn't invest in a 3 member panel and left themselves to the mercy of a single interpretation.

The respondent messed up... and if you are going to own a domain property you need to know the UDRP in order to handle TM disputes.

You NEED to know UDRP and TM law if you are going to protect your online investments.

Take the time to read 20 - 30 cases, you will get the hang of it pretty quickly.

Solution: If the respondent put up a forum where people could sell aftermarket lightbulbs in bulk, and allowed the complainant to make numerous offers on their own accord, this all could have been avoided.

It would have taken a few hours of additional work, and they would be $18k wealthier.

 

[DU]

The trademark is for

THE L GHTBULB STORE where the SPACE is a LIGHTBULB image.

"NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "THE LIGHTBULB STORE" APART FROM THE MARK AS SHOWN"

So what? It's a Trademark Typo? Because it's similar?
They don't even CLAIM RIGHTS TO THE F&CKING NAME.

Or is reading the actual trademark filing not necessary by anyone? Or do we just ignore it?

It's extremely clear because the DISCLAIMER (above) cannot by definition be the ENTIRE mark. The TM is NOT The Lightbulb Store. It's the L (image of a lightbulb) ghtbulb store. In my opinion the complaint should have been thrown out as they didn't even have rights to the name - even IF you arbitrarily add common law rights to the name.

 

[DU]

I'm off to file some TMs for
The Bread Store
The Car Store
The Real Estate Agent
The Entreprenuer
The Candy Store
The .......

.....<head desk>

 

[ulterios]

I'm off to file some TMs for
The Bread Store
The Car Store
The Real Estate Agent
The Entreprenuer
The Candy Store
The .......

.....<head desk>

You forgot your others for

The Smartphone Store
The Popcorn Store
The Porn Store
The Domain Store
The Sex Store

 

[DomainVP]

So what? It's a Trademark Typo? Because it's similar?
They don't even CLAIM RIGHTS TO THE F&CKING NAME.

Hannover Ruckversicherungs-AG v. Ryu, FA 102724
- "spaces are impermissible in domain names"

So they are going with 'confusingly similar' here. Since TheLightBulbStore and The L GhtBulbStore are similar, since domain names can't have spaces. It's a heck of a loophole, but it has precedent.

But you have to remember that having a confusingly similar mark only means that you have to then examine bad faith and fair use.

Which the respondent failed miserably at; that's where the case was truly decided.

This happens all of the time, domain owners putting the weight of the case on TM similarity and registration date, and not giving care to fair use and good faith.

This may be the way it was done in the past, but the UDRP process has evolved, and it can be quite sloppy at times.

The complainant won on a loophole passing the similarity test... and it was a good one.

The registrant should have protected his assets with development.

If in the U.S., every 3 - 6 months.
#1 - do a USPTO search for your domain keywords
#2 - do a TESS search for your domain keywords

If something comes up in either search, prepare for it... because it will come.

 

[Domainace]

"A one member UDRP panel....."

I don't know much about the intricacies of patent law, but I know that you are asking for trouble if you don't go with the 3 person panel. Some on these panels are simply there to drum up business for their IP/trademark protection legal services. Their potential clients are exactly those companies who file UDRPs. So they shamelessly help the plaintiff nail the domainer, and maybe get a nice new client as a reward for stealing a domain. If one of these is your panelist, you are screwed.

If you choose to fight (and there are times when it's just better to surrender the name if you have that option), always get 3 panelists. The other two often balance out the one rogue panelist.

 

[DU]

But you have to remember that having a confusingly similar mark only means that you have to then examine bad faith and fair use.
.

So everyone... for UDRP purposes...
TheLightBulbStore.com
is similar to

Because it's NOT a space... it's a Lightbulb....and that looks a lot like an "i"

I'm going to register a IDN that accepts the character (U+1F4A1)... if only I could figure out how.

 

[onebrand.co]

The Light Bulb Store made a bad business decision by not realizing the importance of the domain. They were smart to attempt a UDRP. They were lucky to win. For every case a business which made a bad decision wins a UDRP, many businesses would have failed at this blatant UDRP attempt. Including big corporations.

This is not a case of cyber-squatting. Why do rich people buy multiple houses world-wide and rent those out? Why don't there is a law stating that they cannot profit or sell high for these excess assets that they have?

So this panelist decision is actually bullcrap

 

[N-A]

I think we can all agree to disagree and agree that this is a reg-fee name anyway.

Otherwise, everyone should be regging TheKeywordStore.com now if they can fetch $18,000.

 

[Josh R]

Ridiculous decision

 

[johname]

UDRP purpose is really not to do generic tests, but to make sure the most commercially sound or lawyer-ed up entity ends up with the domain as soon as the situation doesn't smell right. The smell in this case was the offer and price amount

 

[DU]

UDRP purpose is really not to do generic tests, but to make sure the most commercially sound or lawyer-ed up entity ends up with the domain as soon as the situation doesn't smell right. The smell in this case was the offer and price amount

Based on that argument there should be no domain investors allowed.
Anything over $15 for a non-lawyered-up domainer with no rights should be turned over to the commercial venture.
I have no issue with that by the way.

What happened was that respondent was lazy (as mentioned) and one panelist went insane (as mentioned happens often)

I think we can all agree to disagree and agree that this is a reg-fee name anyway.
Otherwise, everyone should be regging TheKeywordStore.com now if they can fetch $18,000.

This is not a regfee name to the many shops that sell lightbulbs.

 

[DANEYAL]

If $18,000 was quite a high price, then what would possibly be the 'Reasonable Price'. If the owner has no right to own that domain, then even $1 is not reasonable, & Vice Versa.
I dont understand why there are issues on 'intentions'. Everyone buys property 'intending' to earn money.

 

[Name Trader]

"NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "THE LIGHTBULB STORE" APART FROM THE MARK AS SHOWN"

I agree with DU here. They claim right there in the trademark, that they don't have any exclusive right to use TheLightBulbStore apart from the mark as shown. So unless the respondent used their trademark on his websight, the complainant should never have won this case. If they wanted a trademark for the text TheLightBulbStore, they should have applied for one. But their smart TM attorneys probably knew that wouldn't fly.

OK. We could go to common use. But their TM specifically states they have no exclusive rights. Case closed, imho. They would have been better served without that trademark, but for the bad decision.

 

[domaincandy]

The only thing unsound with any reasoning in the decision is the idea that if you offer to sell a domain name/asset for more than roughly the cost, then that somehow is indicative of bad faith. That is nonsensical, and I have a feeling that this particular argument will be used in the future. It is really a nonstarter as far as a logical or reasonable argument. I mean, if the name infringes, then any asking price is immaterial.This idea has been used in past cases, as well.

The respondent was a typical dumb domainer who mentioned (lied) that he had an electrical business that may use the name in the future. Of course, he offered no proof of the electrical business. Every legitimate businessman would have offered proof. Of course, there likely isn't any business. And then to try to argue the technicality about the name. The Judge even said that the document speaks for itself, which is code for RESPONDENT IS BEING DISHONEST.

In reality, it was one of the more well-reasoned opinions that you will find, and it is a just result, when weighing the equities of the situation.

 

[Name Trader]

I agree with the dumb domainer part. But how do you win a UDRP when your trademark specifically makes no claim to exclusivity for the term used?

 

[johname]

But how do you win a UDRP when your trademark specifically makes no claim to exclusivity for the term used?

They were not making a claim of word exclusivity in that document. They were just trying to lay claim to the bulb in 'i'. This statement does not void their rights to be 'awarded' a common law trademark.

Bottom line, as stated earlier, if there any aroma of something fishy. The real world business/lawyer-ed up/has something in TESS party, wins over the naked hunt and sell domainer.

 

[DomainVP]

I agree with the dumb domainer part. But how do you win a UDRP when your trademark specifically makes no claim to exclusivity for the term used?

I think that this was a hail mary; this is not the most sound decision but since there is a word mark (loosely) and the owner did not play their cards right with fair use and bad faith, the registrant lost the case.

They took a shot hoping that the owner was unprepared; and they were.

It's good for us all to know and be aware of these issues and decisions.

Watch your wording, do your research, and protect your assets.

If $18,000 was quite a high price, then what would possibly be the 'Reasonable Price'. If the owner has no right to own that domain, then even $1 is not reasonable, & Vice Versa.
I dont understand why there are issues on 'intentions'. Everyone buys property 'intending' to earn money.

This is a good point. In the UDRP it says essentially that if you are selling a domain that has a TM to a TM holder, then you cannot ask for more than out-of-pocket costs; otherwise it is bad faith.

So asking for $50 - $150 for the domain would be reasonable, based on registration fees, IF there is concrete TM evidence.

I don't think there was any in this case, nor did the domain owner suspect that there was.

I wouldn't offer to sell a domain to anyone that has any legal filings (patent or TM); you are just asking for trouble. Plus, if they want it they will come to you eventually, so just sit tight and use negotiation strategies to get the most ROI on your investment.

 

[Name Trader]

@johname - So they can be awarded a common law trademark for a term even though their TM specifically precludes that? I'm asking, because it seems strange concept to me.