Enforcement

Registrar Is Out-Squatted By A Clever Domain Owner

Domain name registrar Namecheap, Inc., a company that has no doubt profited from the cybersquatting activities of its customers, recently found the tables turned when it filed and lost a UDRP complaint over the domain name namechap.com. Namecheap filed the complaint with the National Arbitration Forum against Respondent Ky Song alleging that the domain name infringes upon Namecheap’s trademark registration for NAMECHEAP.

In support of its argument, Namecheap points to the fact that the Respondent is using the domain name to redirect Internet users to competing hosting and domain name registration services, such as GoDaddy. This isn’t the first time that Namecheap has used the UDRP to try to protect its digital assets as evidenced by successful previous complaints filed over domain names such as nmecheap.com, naecheap.com, and namecehap.com.

In its (quite lengthy) discussion, the NAF Panel discusses why Namecheap failed to prove that the domain name is identical and/or confusingly similar to its trademark. The Panel states that “namechap” does not constitute a misspelling or even “typosquatting” given that it consists of two generic terms, “name” and “chap”, each with a clear meaning of its own. The Panel goes so far as to say the missing “e” even distinguishes the domain name from Namecheap’s trademark.

At that point the content of the Respondent’s website no longer mattered, given that Namecheap failed to establish the first of the three elements required under ICANN policy, all that is needed for the Panel to conclude that relief should be denied. It’s interesting to see a domain name registrar lose such a battle, but it could have been worse. While Namecheap failed to recover the domain name, it was able to escape the Respondent’s accusation of reverse domain name hijacking.

Enforcement

Not A Bright Idea

In 2003, a predecessor of the Just Bulbs lighting company filed and lost a UDRP case against the domain <justbulbs.com> because the respondent agreed to only advertise flower bulbs at the website and so had a legitimate interest in the domain.

Fast-forward to 2013 and the website at this domain now shows sketchy pay-per-click ads for light bulbs and thus competes with JUST BULBS brand. Also, it turns out that the Respondent has now lost over 140 prior UDRP decisions and is an admitted cybersquatter.

Normally, after a losing decision, a brand owner can’t re-file a UDRP complaint against the same domain unless there are some new facts that have come to light that weren’t available at the time of the first complaint or there was serious misconduct such as falsified evidence.  Here, Just Bulbs claimed that “relevant new actions have occurred since the original decision” in 2003 – namely, that the website now advertises light bulbs, not flower bulbs.

However, the Panelist found that despite this change to the present-day use of the domain this new complaint provided no additional or new evidence of the domain owner’s intent when it first registered the domain (remember that the UDRP requires one to prove bad faith use of the domain and bad faith registration at the time the owner acquired the domain). Since the present case didn’t shed any new light on the owner’s intent at the time the domain was acquired, Just Bulbs had its hopes dimmed for a second time.

The Panelist did leave a sliver of light for Just Bulbs, though. He pointed out that the domain is currently being used in bad faith and hinted that this might be enough to support a claim in court – perhaps under the Anticybersquatting Consumer Protection Act (ACPA). Hopefully this will illuminate a path for Just Bulbs to knock the domain owner’s lights out after all.

Enforcement

Navy Sinks Conquistador

According to Wikipedia, conquistadors were “soldiers, explorers, and adventurers at the service of the Portuguese and Spanish empire” whose goal was to conquer new territory for both church and crown. Apparently, an individual in Germany now seeks to take on that mantle but has had some difficulty in finding the right formula for success in his quests.

Involved in a recent National Arbitration Forum (NAF) UDRP complaint, this ambitious yet clueless soldier of fortune lists himself as “Conquistador Sat” and sought to plunder the riches of American retailing by registering the domain OnldNavy.com. However, the opposing forces of The Gap, Inc. led an experienced and respected UDRP Panelist to decide that this particular conquistador had no legitimate interest in the domain name and had registered and used it in bad faith by having it resolve to a pay-per-click (PPC) website with links to the Complainant’s competitors.

Unfortunately, this was just the latest in a string of defeats for this sad soldier. Earlier this year he also lost UDRP decisions relating to the domain names brawnypapertowels.com; webesteronline.com; and advaneautoparts.com. Surprisingly, despite the fierceness of conquistadors of yore and their skill in the use of a wide range of armaments, this particular Respondent also lost a decision against the domain name underarmmour.com.

So what can we expect in the future from Conquistador Sat? A quick reverse WHOIS search for this name turned up no results and so it may be that our anti-hero has marched off into the sunset in search of new adventures. Hopefully, he leaves behind yet another lesson for would-be cybersquatters that domain name knockoffs of famous brands lead to neither treasure nor glory but only heartache and ignominy. It’s actually quite surprising that such blatant squatters as this still walk the earth in light of the past 15 years of UDRP jurisprudence. Unfortunately, with the upcoming launch of over 1,300 new gTLDs, it seems more than likely that there will continue to be young and still naïve explorers who will seek their fortunes by plundering the domain names of others.

Enforcement

Lazy Brand Owner Gets 17 “Lashes” For Delayed UDRP Complaint

UDRP panelists almost never deny a UDRP complaint based on a laches defense. As I have discussed in past blog posts, laches is a legal doctrine that can provide a defense when an adverse party has been unreasonably delayed in asserting its rights and its reliance on that delay results in harm to the defending party. Although extremely rare in UDRP decisions, this was the case in a recent rather egregious UDRP filing involving a 17-year delay that led to a unanimous three-member panel decision to deny the complaint.

The complaint was filed by CoorsTek, Inc. via the National Arbitration Forum (NAF) against Martin Packer/PulseGuard over the domain name http://www.flow-guard.com. In its filing, the Complainant states that the Respondent should not be allowed to hide behind laches, arguing that the reason for the delay is that it only acquired the rights to the FLOWGUARD trademark in 2010 and that the Respondent’s efforts toward diverting business away from the Complainant have recently increased.

The Respondent, in a statement of his own, points out his operation of the website for almost 17 years prior to the complaint and that even if the Panel does not deny the complaint on the basis of laches, it should on the basis that it clearly show that the Complainant does not truly believe the Respondent engaged in bad faith registration. He adds that the Complainant was further likely aware of the disputed domain name since at least 1998, when it registered its own flowguard.com domain name.

In its decision, the Panel best sums up how it arrived at its conclusion in the following quote: “It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent’s domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion.” The Panel further refers to a number of previous cases in which other panels came to similar conclusions.

This case should serve as a reminder to brand owners, not to procrastinate when searching for and going after cybersquatted domain names, or they could find themselves facing the same problem as the Complainant in this case. Of course I also can’t help myself from noting that I had a good chuckle at the Panel’s typo, substituting “Lashes” for “Laches” in its decision. Unintentional as it may have been, it’s a fitting mistake considering the “whipping” this Complainant took.

Enforcement

An Open Letter to Cooperative Cybersquatters

Dear Friendly Cybersquatter:

I hope this letter finds you well and that you are enjoying the summer (or winter if you’re on that half of the planet). Given the nature of my job, I am all too familiar with the practice of cybersquatting, yet while reading through a recent UDRP case filed with the National Arbitration Forum, I was thrown for somewhat of a loop.

At first, nothing about the complaint seemed out of the ordinary. The complaint was filed by Homer TLC, Inc. (part of The Home Depot) against Mr. Samyuk, a respondent based in India, over the domain name hamptonbayshop.com.

What caught my attention, my kind friend, was the section called “Parties’ Contentions.” Normally this is the part where the complainant makes its case and blasts the respondent for cybersquatting, and where the respondent defends itself and its ownership of the domain name(s).

In this case, though, Mr. Samyuk submitted the following, heartfelt statement: “I am deeply sorry for my action. I am willing to transfer the domain hamptonbayshop.com the respective owner Home Depot as proposed in the remedy. Please provide me with the details for initiating the transfer of domain.”

This surprising and sincere apology and consent to transfer must have been very welcome news to the complainant. As someone who has filed many UDRP cases (perhaps even some against you) I’d like to suggest that there is still room to be even more helpful in these situations.

First, because the UDRP complaint had already been filed, the Registrar had put a hold on Mr. Samyuk’s domain, rendering him unable to actually proceed with the transfer he was so willing to make.

Second, while the attitude and willingness to cooperate here are most appreciated, I have to say that it probably would have been even more appreciated if Mr. Samyuk had shown such contrition in response to a demand letter sent before the submission of the UDRP complaint, which would have saved the complainant, thousands of dollars in legal preparations and filing fees.

So my friend, when I reach out to you with one of my warm and fuzzy cease and desist letters, I ask you to please, if you can find it in your heart, be that honorable and helpful cybersquatter sooner rather than later. You’d be making both our lives a whole lot easier and (bonus!) you might even avoid going down in WIPO’s and NAF’s books labeled as a cybersquatter in the first place.

I look forward to our next encounter and remain, faithfully yours.

Steve