Attempted Domain Theft By Trademark Fails In WIPO: Project.me
A German company missing the landrush for the domain project.me goes out after the landrush and registers a trademark on the term in Germany and then files a WIPO complaint against the domainer that grabbed the .me domain during the landrush.
Welcome to trademark abuse.
So with a ton of new extensions coming on the horizon this is an important case.
The three member panel found in favor of the domain holder, despite the domain being parked, with a “for sale” link, and despite the domain holder offering to sell the domain to the trademark holder.
In finding for the domain holder the panel found:
“”"In this Panel’s view, the Complainant has failed to establish that the Respondent registered and is using the domain name in bad faith.”"
“”The Respondent applied for registration of the disputed domain name during the Land Rush application period for the .me domain, on June 26, 2008, three months before the Complainant’s trademark registration was entered in the German trademark Register, three weeks before the Complainant even applied for its trademark registration, and two weeks before the Complainant even came into legal existence.”"
“” The Respondent could not, therefore, have been aware of the Complainant’s existence, let alone aware of the Complainant’s trademark rights, at the time the Respondent applied for registration of the disputed domain name. It is true the domain name was not in fact registered to the Respondent until August 17, 2008, but the delay between application and registration was a result of the timing of the .me Rollout Schedule adopted by the .me Registry to execute the Land Rush applications. “”
“”The Complainant has not provided any evidence to show that the Respondent was, or should reasonably have been, aware of the Complainant and its trademark rights on August 17, 2008, when the domain name registration took effect. Furthermore, given the timings of activities and the different geographical locations of the parties, this Panel considers that the Respondent was not, and could not reasonably have been, aware of the Complainant and its trademark rights when registration took effect.”"
“”Although this Panel recognizes that there are some cases in which bad faith registration and use can be made out even when the disputed domain name is registered before the Complainant’s trademark rights came into existence or before the Respondent was aware of the Complainant’s trademark rights, this is not one of them.”"
Howard Neu represented the Domain holder.
Congrats
Case citation is:
Case No. DME2009-0008
project.me GmbH v. Alan Lin
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No runs, no hits, no errors! Way to go partner!
Where’s the reverse high-jacking ruling? Without serious penalties these problems will only persist.
Best.
agree with Steve…”attempted murder, attempted robbery are punishable crimes…time for some punishments for trying to steal domains.
As it should be.
The domain field/industry could use more of these well-reasoned decisions.
Nice work Howard.
Way to go Howard! Nice work!
Funny enough, sometimes there are dozens of the same trademarks registered in the same country. It is such a mess. That idea of “stealing” the domain is not new. Some people pay big bucks for silly domains [0], some pay big bucks for silly trademarks.
[0] http://dot-me.of-cour.se/2008/10/24/porsche/
Unfortunately you guys do only read the facts you want to read. The company project.me was founded BEFORE the domain has been registered. The purpose of registering the trademark project.me was to protect the name of the company. Also if you’d read carefully and unbiassed the panel’s decision you should have taken notice of two things:
A. The domain name is similar to the project.me trademark (and the company name)
B. Mr. Howard was not able to contend an yrights or legitimate interests in the domain name. Due to the fact that Mr. Howards argumentation was almost completely focussed on attesting the legal rights it is incomprehensible what you guys congratulate about.
Unfortunately the panel did not follow the complainant’s argumentation that registering a domain for the purpose of making money IS bad faith per se.
Think about it… or continue celebrating yourself.
Anmue
“”"
Mr. Howard was not able to contend an yrights or legitimate interests in the domain name. Due to the fact that Mr. Howards argumentation was almost completely focussed on attesting the legal rights it is incomprehensible what you guys congratulate about.”"”
Of course we are talking about each parties legal rights, its a legal proceeding.
Forming a company anywhere is the world does not give that company the right to a domain name plain and simple.
MHB
Thanks, that you point this out. Some of the previous speakers were talking about stealing a domain.
Does anyone know a Jurisdiction where each party bear their own costs,win or lose ?. I want to find a Jurisdiction where I can issue an injunction as soon as someone issues a UDRP and then have the matter heard outside of WIPO rules . Anyone know ?.
Thanks
Kia
Kia
I do not know of any jurisdiction that granted the winner attorney fees automatically by right.
You need to consult with an attorney to figure out your rights