Good Summary of "dictionary word" cases

[jberryhill]

Despite the irrational paranoia of some, most "dictionary word" UDRP disputes are resolved in favor of the domain registrant. This recent case won by Ari Goldberger includes a good summary of considerations for these types of cases, and an extensive list of citations to prior cases:

http://www.arb-forum.com/domains/decisions/313566.htm
Complainant alleges that Respondent engaged in bad faith because Respondent registered the <hood.com> domain name with the intent to resell them. As noted above in the legitimate interest section, the mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy but, rather, may be taken as proof of Respondent’s legitimate interest. It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy.

 

[GeorgeK]

Good point, John. Registrants are entitled to sell their domain for market value, should someone want to purchase it, to cover their opportunity costs associated with the domain as bona fide owners/developers of it.

 

[mark]

John: Thanks for the info. I know most people here appreciate your continued assessments of our domain world.

 

[dtobias]

Despite the irrational paranoia of some, most "dictionary word" UDRP disputes are resolved in favor of the domain registrant. This recent case won by Ari Goldberger includes a good summary of considerations for these types of cases, and an extensive list of citations to prior cases:

http://www.arb-forum.com/domains/decisions/313566.htm

But note the dissent in that case, indicating that there are panelists (in the minority in this particular case, but sometimes on the winning side) who are more expansionist in defining trademark rights over words that are generic in other contexts.

 

[jberryhill]

Yep. There are always some in any crowd who rode the "short bus".

 

[DaddyHalbucks]

It's why domainers always need to anticipate the worst case scenario: no registered trademark (or a dictionary word trademark), and a totally clueless panelist.

The deciding factor may be if the domain owner does not appear to be the "bad guy."

 

[Dave Zan]

Your latest 2 posts have practically answered questions I was about to ask
you. Many thanks!

 

[Garry Anderson]

John> Despite the irrational paranoia of some, most "dictionary word" UDRP disputes are resolved in favor of the domain registrant.

Every "dictionary word" UDRP dispute should be decided in favour of domain registrant - unless they did some wrong against the trademark holder (e.g. infringement).

That includes initialisms - cases like JT.com - gave to Japan Tobacco - UDRP decided to ignore the fact that JT initials can be used for most anything.

Quote: "It is only the registration with the &#8220;purpose of selling ... the domain name registration to Complainant&#8221; that establishes bad faith under the Policy."

I have highlighted the real moronic stupidity of this before.

You can sell apple.tld to anybody - except Apple Computers or Apple Records or Apple Tobacco or ...

 

[Dave Zan]

Every "dictionary word" UDRP dispute should be decided in favour of domain registrant - unless they did some wrong against the trademark holder (e.g. infringement).

Err...Garry, isn't that the point why some UDRP cases that involve "dictionary
words" are resolved in favor of the Complainant? Because the Respondent did
something wrong against the Complainant based on the UDRP points already
established?

Heck, there are UDRP cases where the Complainant won but didn't even have
a trademark yet established they have "rights". I'll look for them in a while.

If the Panelist/s believe/s the Complainant has proven its case on all 3 points
despite what the Respondent has provided (if any at all), then that's all folks.

That includes initialisms - cases like JT.com - gave to Japan Tobacco - UDRP decided to ignore the fact that JT initials can be used for most anything.

In the jt.com case, 1) the Respondent didn't respond, and 2) the Complainant
submitted both its arguments and its "proof" backing them up. The Panel has
apparently found merit in the Complainant's arguments based on the UDRP
rules.

Specifically:

(4) The Complainant's first contact with the Respondent was made by Bill Summers working in the systems department of JT International in Switzerland. In the fall of 1999, Bill Summers asked the Respondent by e-mail whether or not the latter was interested in selling the rights in the Domain Name at issue. The records of these e-mail negotiations are found in Annex E. Thereafter, Bill Summers and the Respondent exchanged e-mails to negotiate the price for the rights in the Domain Name at issue. First, Bill Summers offered the Respondent the sum of $5,000 for the rights. The Respondent, on November 15, 1999, sent an e-mail to Bill Summers indicating that this sum was a "low offer." (Annex E, No. 4: the Respondent replied that "Well, I am going to miss my Swissair flight to Zurich with your low offer."). On November 16, 1999, Bill Summers wrote to the Respondent indicating that $7,500 was the maximum amount that the Complainant was willing to pay. On December 6, 1999, the Respondent wrote to Bill Summers indicating that $1,000,000 was not satisfactory. (Annex E, No. 9: the Respondent wrote that "Let me ask you this way, if you owned the JT.COM domain, would you let it go for a million dollars, I think not.").

(5) In the spring of 2000, Vincent F. Bick of JT International in Geneva wrote to the Respondent asking the latter to discuss the domain name matter. Thereafter, email correspondence took place between Vincent Bick and the Respondent as shown in Annex F.1. The Respondent, on March 1, 2000, wrote to Vincent Bick asking the latter whether he wanted to talk to the Respondent by phone. Then Vincent Bick wrote to the Respondent saying that "We are preparing a legal action to cancel/transfer JT.COM and as a courtesy wanted to give you an opportunity to reconsider your position in the matter." On March 2, 2000, the Respondent wrote to Vincent Bick saying that "You can also show my old article regarding cybersquatting from March 31, 1999, in the article [393] to your staffs who can read Japanese at the following link: http://www.cyberparty.net/domain/log/000400.txt." The "article" referred to in the Respondent's e-mail of March 2, 2000, is a cyber forum, of which the Respondent is a member, to discuss the sale of domain names. The record of this cyber forum (in Japanese) is found in Annex F.2, and an English translation of the most relevant parts of the cyber forum is found in Annex F.3.

==========================================================

The Respondent's two e-mails to Bill Summers in the systems department of JT International in Switzerland, dated November 15, 1999, and December 6, 1999, respectively, clearly indicate the Respondent's bad faith, as set forth in Paragraph 4(b)(i) of the Policy: "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." As such, the fact that the Respondent entered into negotiations with the Complainant to sell the JT.COM domain name for a sum in excess of his "out-of-pocket costs" indicates his bad faith.

I only posted what practically clinched it for the Complainant. If the registrant
of that domain name only responded, things could've turned out differently,
who knows? (though I doubt it due to that email exchange...)

Quote: "It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy."

I have highlighted the real moronic stupidity of this before.

Then what do you suggest would make it easier to prove bad faith that's also
legally feasible? Or some other aspect UDRP should consider?

The UDRP has specific rules on how each side can prove its "case". You don't
like 'em, tough luck.

You can think all you want that WIPO and the UN are corrupt. But...rules are
rules. :-D

Like most if not everything else, Garry, it's a work in progress. Slow, but still
in progress...

 

[GypsyBee]

I just received an email today accusing me of cyberpiracy and infringing on a TM. They said that if they don't hear from me in 48 hours with willingness to transfer the domain to them, that they will refer this issue to their "highly competent voracious trademark counsel". The domain in question is a dictionary word.

They also said, that if the transfer is done immediately, they'd be willing to provide documentation that guarantees no additional action from them. This confuses me because the only document I got from them is that one email which I hardly consider a legal action?

Just so you know, I never tried to sell them this domain name. Their business names are nothing like this domain name.

They claim to have exclusive trademark rights.

I don't know much about TM's. From what I can see, it doesn't look like they own the TM. I'm thinking perhaps they just decided to get the domain name and use it to help strenghten their TM case.

Standard Character claim: No

Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

Date of Status: 2004-06-10

Filing Date: 2003-11-26

Transformed into a National Application: No

Should I ignore this person's email or should I reply? Or should I be suing them for their awful accusations?

I can be way off on all this, thus my post.

I'd greatly appreciate feedback.

 

[Dave Zan]

Hi GypsyBee.

I hope you don't mind, but let's discuss this as a separate thread. Also, if you
can edit your post to remove the domain name in question (or request a mod)
here, so much the better.

 

[GypsyBee]

Hi GypsyBee.

I hope you don't mind, but let's discuss this as a separate thread. Also, if you
can edit your post to remove the domain name in question (or request a mod)
here, so much the better.

Thanks, davezan1. Done. I'll start a new thread as you've recommended.

 

[Dave Zan]

Thanks, davezan1. Done. I'll start a new thread as you've recommended.

Whoops! I actually started one for you, sorry!

 

[GypsyBee]

Whoops! I actually started one for you, sorry!

Why do you think my post should be in a new thread?

 

[Garry Anderson]

Garry> Every "dictionary word" UDRP dispute should be decided in favour of domain registrant - unless they did some wrong against the trademark holder (e.g. infringement).

Davezan1> Err...Garry, isn't that the point why some UDRP cases that involve "dictionary words" are resolved in favor of the Complainant? Because the Respondent did something wrong against the Complainant based on the UDRP points already established?

If you have read the cases, you will know that many did nothing wrong against the trademark holder - the Complainant just used corrupt UDRP against them.

Garry> That includes initialisms - cases like JT.com - gave to Japan Tobacco - UDRP decided to ignore the fact that JT initials can be used for most anything.

Davezan1> In the jt.com case, 1) the Respondent didn't respond, and 2) the Complainant submitted both its arguments and its "proof" backing them up. The Panel has apparently found merit in the Complainant's arguments based on the UDRP
rules.

Hello - what is the exact "wrongdoing" that the Respondent did against the Complainant?

You do understand that there has to be a "cause of action" before anybody can bring a case against you - don't you?

You know - you must have done something wrong against them - even though it may have been unintentional accident.

Specifically - plaintiff has to PROVE "what legal wrong the plaintiff claims to have suffered [for] a court ...to order the defendant to do to compensate the plaintiff for that wrong".

http://www.surch.co.uk/-/Cause-of-action.html

Davezan, there are already rules in the real world as to what constitutes bad faith on trademarks - ask a lawyer.

UDRP rules are corrupt rules.

Sorry, but your "work in progress" excuse fails to explain the corruption and cover-up.

Judge Judy would throw these corrupt cases out in two minutes flat:

Judy> Tell me, as Plaintiff, you must know this name can also legally be used by other businesses for different goods - where is the wrongdoing against you?

Plaintiff> Derrr... He was going to sell it to highest bidder.

Judy> Mr Plaintiff - it is called the free market or free enterprise. So what you are saying then; you brought him to court knowing there was no wrongdoing against you. Case dismissed. Plaintiff pays counterclaim of $2,000 costs to Defendant for bringing a malicious suit.

What do you not understand?

 

[jberryhill]

What do you not understand?

Why you think court proceedings operate like they do on an artificial TV program.

So, pray tell Garry, if your "Judge Judy" court were to rule on the jt.com case, and the domain registrant didn't respond to the subpoena and show up in court, to make it a fair comparison, what does Judge Judy do then?

She does what any judge does - issues a default judgment in favor of the plaintiff.

Davezan understands that. You do not.

Quote: "It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy."

I have highlighted the real moronic stupidity of this before.

You can sell apple.tld to anybody - except Apple Computers or Apple Records or Apple Tobacco or ...

Read the quote. It is not talking about registering a dictionary word and then happening to sell it to a TM owner - it is talking about registering a dictionary word for the specific purpose of selling it to a TM owner. Those are two different things.

If I am a gun dealer, I can sell a gun to anyone. The buyer might turn out to be a bank robber, but I am an innocent seller. If, however, I *KNOW* ahead of time that the buyer is a bank robber, and I charge a premium for that reason, then I am criminally liable. You are reading that set of rules as "You can sell to anyone except a bank robber". That is a misleading way to read the rules.

Try reading this excerpt from a three-letter domain case published today, and see if you can tell the difference betwen "general intent" and "specific intent".

http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0748.html

Respondent is not using any of the domain names to set up web sites. He is trying to make a profit by selling them to the highest bidder and his business plan is clearly to attract someone who would be interested in the domain name, either because of the intrinsic meaning and value of the word or letters, including as a trademark in certain cases. His knowledge of domain name “brokerage” is confirmed by the evidence. In reply, his point is that that it may be so, but that it is not illegal. It is true, of course, that anyone is free to register a common word as a domain name and not use it.

The Complainant alleges bad faith registration based on knowledge by the Respondent that NNN was its mark. The Complainant’s evidence on this point is rather weak and it is flatly denied by the Respondent. Indeed, there is no evidence that the Complainant’s mark was known or even used in the Respondent’s country of residence. The fact that there are many NNN trademarks as was mentioned by the Respondent tends to show that the Respondent knew that NNN was a trademark. It could be Next Navy Network; or perhaps in Respondent’s case, Nippon News Network (Japan); or No New News; Notes Named Network, etc. But there is no evidence that the Respondent knew that NNN was the Complainant’s mark.

The Respondent’s general intent is to register domain names that could be of interest to someone else. He argues that NNN is the abbreviated name of a type of commercial lease. The Panel is not convinced. In this Panel’s view, however, to warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark. Paragraph 4(b) of the policy focuses primarily on the Respondent’s intent or purpose. When paragraph 4(b)(ii) refers to the trademark owner, it seems to require that that trademark owner be the complainant. That leads this Panel to the conclusion that bad faith must be specific to the Complainant. Moreover, if a transfer is ordered, it benefits the Complainant and indirectly constitutes a finding against other potential claimants/trademark owners, including those who in this case could perhaps have a valid claim against the Respondent in respect of the same mark. As mentioned above, while the Complainant has the oldest United States registration of an NNN trademark, there are other NNN trademarks that have coexisted for several years. It may be, of course, that the Complainant would have a remedy available under United States law (Anti CyberSquatting Protection Act or other national law), but that is not for this Panel to determine.

On balance, because the Respondent did not know that NNN corresponded to the specific trademark of the Complainant and was essentially “just shooting in the dark,” the Panel finds that the Complainant has not proven the third part of the test of the Policy.

 

[Dave Zan]

If you have read the cases, you will know that many did nothing wrong against the trademark holder - the Complainant just used corrupt UDRP against them.

Actually, I've been reading the other UDRP cases for some months now. Those
that I haven't, I'll eventually get to them (mind you, that's about 4 years
worth of material, so I'll take my time).

Correct me if I'm wrong, but you indicated in your sig file or one of your posts
at another forum that you uncovered some wrongdoing. Is that one of the
reasons why you believe so much that WIPO, UDRP, etc. are corrupt?

I'm really curious as to know why you vehemently believe such.

Hello - what is the exact "wrongdoing" that the Respondent did against the Complainant?

Unfortunately I can't give a blanket answer to that. But I'll offer some:

1. That depends on what "venue" the Complainant will choose to take up his
or her grievance, be it the UDRP or a Court of Law. Each venue has certain
rules on what constitutes "wrongdoing" in the hopes of: a) simplifying things,
b) prevent possible abuse by any of the parties involved, and c) reach a fair
and logical conclusion at the soonest possible time.

2. Many "rights holders" (and I mean those who've established rights like
those trademark holders, common law ones, service marks, etc.) prefer the
UDRP because of its methods, less costs than a Court case would entail, etc.
More importantly, it's specifically designed for that type of dispute.

Of course, the Complainant has to follow the UDRP rules on establishing rights
to the domain name in dispute, first.

3. If the Complainant loses the UDRP, he, she, or it can always dispute it in a
Court of Law. But it'll cost time and money (plus a lot of potential lawyer
grandstanding which most if not all of us hate).

4. The UDRP is not meant to resolve domain name hijackings (although there
are a few exceptions. Hint: xi.com) or ownership disputes. Those 2 are to be
dealt with in Court.

BTW, put yourself in the judge's or panelist's position regarding jt.com: if the
respondent or defendant didn't reply, what would you do? Remember, there
are rules to follow.

You be the "judge" when to follow such or make exceptions if you can without
exposing yourself to danger.

You do understand that there has to be a "cause of action" before anybody can bring a case against you - don't you?

You know - you must have done something wrong against them - even though it may have been unintentional accident.

Specifically - plaintiff has to PROVE "what legal wrong the plaintiff claims to have suffered [for] a court ...to order the defendant to do to compensate the plaintiff for that wrong".

http://www.surch.co.uk/-/Cause-of-action.html

Davezan, there are already rules in the real world as to what constitutes bad faith on trademarks - ask a lawyer.

Every "rule" has an exception, Garry. And here's one recent example I just got
in my email:

wildwesthosting.com
http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0789.html

The point is that you don't really need a "cause of action" or "what legal
wrong the plaintiff claims to have suffered [for] a court ...to order the
defendant to do to compensate the plaintiff for that wrong" if you really feel
like just doing it. The 2 quoted items are more or less what're required in the
rules of Court to establish your claims.

Some do it out of principle, others just...because.

UDRP rules are corrupt rules.

That's your opinion, not mine. And you still haven't answered my question
earlier as to what you suggest UDRP should do to better establish "bad faith"
or even adopt a new policy or procedure to help resolve domain disputes due
to trademark infringement.

I've even read that many people even want the UDRP replaced with a better
procedure. Sure, but what?

Sorry, but your "work in progress" excuse fails to explain the corruption and cover-up.

I actually don't mean that as an excuse, but a reality we all face sometimes
(though not everyone accepts it). Progress in certain fields can be too slow
for comfort, but that doesn't mean there isn't any.

And it's not meant to explain the corruption and coverup you so allege. Since
you believe in it so much, are you working with any law enforcement agency
or even any media personality to prove your claims?

What I'm actually hoping for is a procedure to resolve ownership disputes
without the need to go to Court. But even that isn't easy to prepare.

Judge Judy would throw these corrupt cases out in two minutes flat:

Judy> Tell me, as Plaintiff, you must know this name can also legally be used by other businesses for different goods - where is the wrongdoing against you?

Plaintiff> Derrr... He was going to sell it to highest bidder.

Judy> Mr Plaintiff - it is called the free market or free enterprise. So what you are saying then; you brought him to court knowing there was no wrongdoing against you. Case dismissed. Plaintiff pays counterclaim of $2,000 costs to Defendant for bringing a malicious suit.

What do you not understand?

If the complaining party had any common sense knowing they can't prove it,
then they shouldn't bother in the first place. But your example above goes to
show you don't need a "cause of action" or a "legal wrong" to bring your issue
to Court when you just want the domain name or whatever reason you have.

Only a dumbarse (sorry, I just love the second word) would know it's stupid
to bring it to Court knowing he/she/it can't prove it but insists on doing so.

 

[Yoshiki]

Well, I would say, with that panelist in the JT.COM case, the recent NNN.COM
case would be lost as well. In another word, the outcome for the JT.COM case would be different with this panelist in the NNN.COM case.

 

[jberryhill]

Well, I would say, with that panelist in the JT.COM case, the recent NNN.COM
case would be lost as well. In another word, the outcome for the JT.COM case would be different with this panelist in the NNN.COM case.

Congratulations, btw.

In the NNN.com case, there was a properly-filed response. However, another extremely important factor to consider is that jt.com was a very early case in the UDRP, and that panelists' understandings have also been evolving. There are some panelists who issued outstandingly lousy opinions back in 2000 who are now on the list of candidates that I consider selecting, depending on the issues of the case at hand.

 

[Yoshiki]

In the NNN.com case, there was a properly-filed response. However, another extremely important factor to consider is that jt.com was a very early case in the UDRP, and that panelists' understandings have also been evolving.

Thank you, John.

My point is that, even if there were a proper response for the JT.COM case,
I doubt, with that panelist, the outcome would change. The panelist happens
to be a Japanese national and he would have known there are at least
3 well-known Japanese organizations which can claim JT as their initials.

Moreover, Japan Tobacco's homepage can be found at: http://www.jti.co.jp/ and not at: http://www.jt.com/ .