Latest Reverse Hijacking Decision - Decal.com

[PalmBeach]

Does the Complainant (Party that wants the domain name) need to go through WIPO Arbitration before filing a cyber squatting / trademark infringements lawsuit against a Respondent (domain owner) in the Complainant States District Court?

 

[flamewalker]

Nope. Often times, I think, it is cheaper to use WIPO instead of filing a lawsuit. Lawsuits can get very pricey very quickly... WIPO, while there is no monetary damages awarded, is often used in lieu of a lawsuit due to the relative speed at which a ruling is made.

Often times the suits are done by larger corporations that want to really make it well known that they don't play around (ie to make an example of someone to help discourage others from cybersquatting).

 

[PalmBeach]

How much could it cost a domainer to defend themselves against a cybersquatting / trademark lawsuit filed against them by a large company with deep pockets in another states district court?

 

[flamewalker]

If they have deep pockets... you don't even want to know lol...

Deep pockets can drag you down in court for a long time

 

[Irish31]

Yes and no... To hire a lawyer to do it will cost usually a minimum of $5k... thats a lot just to jerk around another person...both sides will pay a lot, not just the respondent.

This holds true for domainer to domainer type situations. Sounds to me like there is no downside to a company trying this, especially if the domain has some serious financial value to it. The company knows they would need to spend XXX,XXX$ on it, so it's much easier for them to toss a drop into the bucket and try and bully it away at a discount rate, while possibly severely crippling the owner financially.

Ofcourse, not a perfect world, but this seems fairly obvious and i've seen this little routine played out several times by companies that would rather pay lawyers than domain holders.

 

[PalmBeach]

So the rightful owner of a domain name is eventually be the party that has the most money to through at a law suite. The UDRP / WIPO Arbitration process means nothing if it is not a prerequisite to a civil suite.


A large company would only file a cyber squatting / trademark infringements lawsuit in their State’s District Court if they had no balls and were afraid they would lose a cyber squatting WIPO Arbitration decision.
So what can a David-domainer do against a big bucks Goliath who is prepared to out spend them on attorneys[FONT=&quot] [/FONT] fees to win civil suite by defalt?



What legal maneuvering can a domainer do to minimize their out of pocket expense and maximize the out of pocket expense of a big bucks Goliath trying to strong arm a domain name away from the rightful owner by out spending them in civil court? What are the options?

 

[flamewalker]

Do your homework, don't get tm infringing names. That is the best way. WIPO is not meaningless, it is just the cheaper alternative to acquire a name over a lawsuit via ACPA (I think thats it)...

There isn't a surefire way to avoid risk, but you can majorly limit it by thoroughly researching a name before acquiring it yourself (look at the history in archive.org, do tm lookups, do google searches, etc).

 

[dvdrip]

It comes up in UDRP policy discussions from time to time, and is shot down just as often. If people want to collect monetary damages on either side, they can go to court.

John, is there a time limit within you can sue the Complainant after you win at UDRP?

Also was the other case decided yet?

 

[jberryhill]

John, is there a time limit within you can sue the Complainant after you win at UDRP?

Also was the other case decided yet?

1. After a year or two, the claim might be barred in some jurisdictions, but that would be a jurisdiction-dependent question.

2. No, the panel extended its deadline to August 7, and it may be a few more days after that before WIPO formats it and sends it out. Depending on which facts the Panel decides to report, you're going to say, "I can't believe they filed that."

 

[draggar]

Good, I've been looking for some good ones to blog about on my site. I've been watching the WIPO site from time to time and nothing has really been as newsworthy as decal.com

I love this line, though:

The Panel makes its findings of reverse domain name hijacking for similar reasons. The Complainant should have known its case was fatally weak, in relation to the second and third elements of the Policy. It seems plain that the Complainant, had it properly understood what was required, would have understood that it could not make its case.

Talk about a smack down!

 

[jberryhill]

I've been watching the WIPO site from time to time and nothing has really been as newsworthy as decal.com

What people find "newsworthy" in UDRP decisions strikes me as odd, since decisions that are IMHO very significant often get no notice at all.

Instead of checking the site, you can sign up for a daily email from WIPO listing that days decisions. It's the first email I check in the morning.

At NAF you can just do a search with the form blank, order the results by decision date, and then click to the last page.

This case, this morning from WIPO, was IMHO a great discussion of what the "bad faith" element is all about:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0864.html

The purpose of the above is not to seek to suggest that VELCRO is not a trade mark, for clearly it is a trade mark and a widely known trade mark at that. However, the evidence put before the Panel by the Complainants demonstrates that there is significant scope for perfectly innocent misuse of the trade mark as a generic term. It is with that in mind that the Panel has to assess whether the Respondents’ adoption of the Domain Name was motivated by a desire to cause damage to and/or exploit the goodwill of the Complainants or whether it was something quite different.

The decision is not particularly interesting to domainers, but I got into this stuff primarily out of concern for ordinary end-user registrants. The way things work out in a legal career, though, is that if you care about the First Amendment, then you'll end up doing a lot of work for pornographers; if you care about the Fourth Amendment, then you'll end up doing a lot of work challenging drug convictions - because those are the contexts where that type of legal issue comes up on a recurring basis.

 

[draggar]

Instead of checking the site, you can sign up for a daily email from WIPO listing that days decisions. It's the first email I check in the morning.

I just saw that last night, I guess it's worth it to acknowledge that they have other pages than the decisions page. :smilewinkgrin: I even set up a separate email address for that feed and Outlook is throwing them into their own folder (for easy management).

Your example (Velcro) may not be directly interesting in domainers but maybe some should pay attention to that - it will show them what companies do go after domains and what they are looking for.

 

[buysellfast]

well done mate. Good thing, we have a voice now.

 

[wussadotcom]

Good work guys.. at last lol..

 

[jberryhill]

Also was the other case decided yet?

http://www.johnberryhill.com/hero-com.doc

...

In addition, the Respondent included an email to the Complainant attaching an online complaint referral, that the Respondent had made on June 19, 2008, to the US Federal Bureau of Investigations Internet Crime Complaint Center. That referral alleged that the Complainant had victimized the Respondent by seeking to acquire the disputed domain name fraudulently.

 

[flamewalker]

Wow... moron doesn't even begin to describe their idiocy!

Thats just utterly jaw dropping... Good thing they found you John!

 

[jberryhill]

Thats just utterly jaw dropping...

Told you.

The Panel left out the most bizarre fact. A VP of the company wrote to the registrant using his personal email and saying that he wanted to buy the domain name for a local "base-ball team" he was forming. That's where the 250K figure came from. The idiot is from Switzerland, and didn't know that baseball isn't hyphenated.

That communication is the basis for the wire fraud complaint.

 

[flamewalker]

So... he offered $250k, then tried to use that to say he tried to sell it for that? Double, triple, quadruple wow... idiot.

 

[jberryhill]

Check out dave.hero.com , surf.hero.com , hgd.hero.com ... The decision also left out that subscribers all got their own hero.com URL's. That's actually okay with me, though, since they made it seem as if the parking page at www.hero.com is all there is. Check out archive.org for those URL's too, if you like.

The Heroic Sandwich was one of the three FIRST internet cafe's in NYC - one of the largest cities in the world.

Notice in the procedural stuff they mention that the Complainant raised an objection over word length of the response. Actually, the "response" was within the limit, and then included additional material on RDNH.

So, in other words, the Complainant received all of this information, and instead of withdrawing the complaint, they counted the words in the response.

Utter dickheads.

 

[draggar]

Excellent job, John!!

Any chance of going after the complainant for mail fraud?