Owner Of UGN.com Forced to Defend UDRP Against Someone With No Trademark & No Proof

Talk about a waste of money.

The owner of the domain name UGN.com just successfully defended a UDRP against UGN, Inc which was represented by Laura Petrolino of Arment Dietrich, Inc., Illinois

The owner of the domain has owned it since at least 2001.

Complainant had a trademark for the term UGN SOUND SOLUTIONS FOR THE AUTOMOTIVE INDUSTRY but not for one for UGN.

The one member panelist Sandra J. Franklin, made short work of the decision, throwing the case out since the Complainant failed to “submitted any arguments or proof that is has rights in UGN as a mark, but merely states that UGN, Inc. is its brand name.”

“The Panel finds that Complainant has not met its burden of proof under Policy ¶ 4(a)(i) and, therefore denies the Complaint.

Considering that all three elements of the Policy must be met and that the Complainant has failed to satisfy the very first element, the Panel declines to analyze the other two elements of the Policy.”

So the domain holder had to spend money and time to defend this UDRP that had no basis for a claim.

Vertical Axis Hit With UDRP on 8 Year Old Domain GlobeWay.com

Vertical Axis has just been  Hit With a UDRP on the domain name GlobeWay.com

The domain according to DomainTools.com has been owned since at least 2007 and possibly 2006 by Vertical Axis.

The domain name is parked to a very generic parking page.

The Complainant is not yet listed.

I don’t see any federal trademark for the term Global Way, in the United States Database.

However there is a trademark for Globalways that was filed in November of 2013 by a German company

Jason and Ari have done a great job for Vertical Axis in defending a bunch of UDRP’s on behalf of the company and hope they get another Reverse Domain Name Hijacking ruling on this domain.

 

An Example of Why People Still CyberSquat

Why do people still cybersquat ? That was a question posed a couple of weeks back on Namepros, and while I am not advocating it any way, I am going to give an example of how it still pays off in 2014.

PluralSight.in sold on Wednesday for $16,000. The domain was registered in July of 2013, by a gentleman in China who just listed himself as Jeff. No last name, just Jeff. Well just Jeff regged pluralsight.in which has several live trademarks, some before the name was registered and others registered after the domain registration.

The company Plural Sight was written up on Tech Crunch back in 2012 when it announced its first funding from the outside world. The company took in $27.5 million.

From the article:

Pluralsight, an online training resource targeting professional developers, is today announcing its first outside funding, courtesy of a $27.5 million investment from Insight Venture Partners. The additional capital will help Pluralsight fund the expansion of its course library and will be used for hiring.

Salt Lake City-based Pluralsight was founded back in 2004 by Aaron Skonnard (CEO), Fritz Onion (Editor in Chief), Keith Brown (CTO), and Bill Williams (who’s no longer there). The company got its start as a classroom training outfit that once involved sending out an instructor to a business or having employees attend a training event. Three years in, it shifted the business model from in-person training to online learning.

Read the full story here

The company has been active on the acquisition front as well, they purchased Digital Tutors for $45 million back in April.

So did being in China and just having the name Jeff help the .in registrant ? Perhaps the company figured it was simpler to purchase the name on a trusted exchange like Sedo, than to file a UDRP and have to deal with a registrant in another part of the world.

$16,000 is a significant amount of money for a handreg in the .in extension, only two .in extensions have sold for that much or better in 2013 or 2014 (Domains.in $40,000, Yum.in $16,000).

So while there is great risk in regging names like this and it is not recommended by anyone here, it sometimes pays off as the registrant gets what they were hoping for, the perfect buyer that has a lot of cash, who will just buy the domain.

3rd Reverse Domain Name Hijacking of The Day: Sin Spirits LLC Guilty On SinVodka.com

Sin Spirits LLC represented by George M. Dipp, Texas has been found Guilty of Reverse Domain Name Hijacking (RDNH) making it the third RDNH ruling of the day which must be a record, on the domain name SinVodka.com

Respondent registered the disputed domain name on November 9, 1997 as evidenced by the Whois records.

Complainant makes four attempts to negotiate a purchase of the disputed domain name at Domainsales and Sedo.com on May 6, May 10, May 12 and May 27, 2014, but does not agree to the price offer and thus fails to negotiate the sale of the domain of interest.

On May 8, 2014 Complainant registered the legal entity Sin Spirits LLC with the Texas Secretary of State.

On May 14, 2014, namely more than 6 years after the registration of the disputed domain name by Respondent and shortly after the negotiations for sales of the disputed domain name broke off, Complainant filed a trademark application (Serial No. 86280743) to the USPTO seeking for registration of the “SIN SPIRITS” trademark in class 33, particularly for distilled spirits, spirits, spirits and liquors, vodka.

This is not only because the mere filing of a trademark application which has not been examined (namely no issuance took place) does not confer trademark rights under the Policy (See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003), and thus is not sufficient to establish rights in a trademark necessary to satisfy Policy 4 (a)(i), but also because no evidence could be submitted by Complainant showing that it might hold any common law rights based on prior use of the “SIN SPIRITS” trademark as the USPTO records clearly show that the application was filed based on an intent to use. Moreover, nowhere in his submission does Complainant allege that he has been using the mark or might have been known under this mark.

Thus, taking into account that registration of the disputed domain by Respondent, significantly pre-dating the trademark filing by Complainant, cannot be treated as the registration in bad faith, and further research into the second element of the Policy also makes no sense as Complainant, having not established the first element of the Policy, has no ground to allege that Respondent has no rights or legitimate interests in the disputed domain, the Panel decides to decline further analysis of the other two elements of the Policy.

Reverse Domain Name Hijacking

Having found that

- the registration of the domain significantly pre-dates trademark filing by Complainant (which, as mentioned before, does not confer trademark rights to Complainant) and of which Complainant was well aware when he brought the present complaint, and

- the trademark filing was made, and the present complaint was filed following unsuccessful attempts to negotiate sales of the disputed domain,

The Panel has come to a conclusion that the complaint was filed in bad faith, abusing the Policy in order to acquire the domain name, and thus such activities of Complainant qualify for an attempt of reverse domain name hijacking in the meaning of Rule 1 of the UDRP Policy.

Citybankonline.com Guilty Of Reverse Domain Name Hijacking

CITY BANK (not CitiBank) whose site is CityBankOnline.com and CityBankTexas.com, represented by Kristi Dent of Cox Smith Matthews Incorporated, Texas, USA was just found guilty of Reverse Domain Name Hijacking (RDNH). The domain in question was CityBank.com.

The three member panel UDRP panel of Fernando Triana, Esq, James A. Carmodym, and Dennis A. Foster, Esq said on the issue of RDNH:

“”In the present case, the disputed domain name was registered in 1995, with a business model based on pay-per-click advertisement. Complainant registered its domain names in 1998 and 1999, which means that at least on those dates Complainant should have known that the disputed domain name was not available and neglected to proceed against it, until 2014, which is 15 years after Complainant should have known of the existence of a conflict.

Furthermore, Complainant did not provide any evidence as to prove its trademark rights regarding the expression CITY BANK and tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent offered to sell the disputed domain name for over USD $180,000, when from the exchanged emails it is obvious that Respondent was not offering the disputed domain name but responding to an offer from Complainant, and simply informed Complainant that a third party had offered to pay for the disputed domain name USD $180,000, and that in fact Respondent refrained itself from selling it.

Finally, Complainant’s long delay in bringing this action is another factor supporting a finding of its bad faith.

The fact that Complainant filed this proceeding nearly 15 years after Complainant should have known of the existence of the disputed domain name and over 18 years after the disputed domain name registration, suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith.””