Austin Pain Association (“Complainant”), just won control of the domain name AustinPain.com which was owned by HugeDomains.com
As someone who is the subject of UDRP complainants as well (2 pending) it brings me no joy to report on these cases, but the cases are the cases and in this case HugeDomains.com lost control of AustinPain.com which the panel acknowledged was generic in nature and for which the complainant didn’t even have a registered trademark and a common law trademark which “Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.:
Yet they awarded the domain to the common law trademark holder,.
Here are the findings of the one member panel:
1. Complainant operates a number of pain management clinics in Texas doing business as “Austin Pain Associates.”
2. The disputed domain name was registered by “Interventional Pain Associates” on July 27, 2009.
3. Complainant registered the business name “Austin Pain Associates” with the County Clerk of Travis County, Texas on December 20, 2003.
4. Respondent is a domain name reseller.
5. Respondent registered the disputed domain name on January 1, 2013.
6. Respondent has not used the domain name.
The question before Panel is whether Complainant has done enough to prove common law or unregistered trademark rights.
To do so it has been said that “[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”
Complainant claims to have used the name AUSTIN PAIN ASSOCIATES since 2002 and provides evidence of registration of the business name “Austin Pain Associates” in Travis County, Texas on December 20, 2003.
It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES.
Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
It is far from easy to assimilate the evidence into a sustainable case for unregistered rights.
The Texas business name registration from December 2003 is not a substitute for proof of trademark rights in the sense already discussed.
Registration of the assumed name might be an indication that the name was adopted for use then and may have been used since, but there is no proof of those matters. To the contrary, the date of first use of AUSTIN PAIN ASSOCIATES is vague.
Complainant suggests it once owned and lost the disputed domain name but its own evidence in that regard shows that on July 27, 2009 the disputed domain name was registered by “Interventional Pain Associates.”
There is no explanation of a connection (if any) between Complainant and Interventional Pain Associates. Complainant has not described the circumstances under which it lost the disputed domain name.
In response to the Panel Order in which Complainant was invited to provide further and better particulars of its trademark rights and, in particular, its claim to a common law trademark right, submissions and some, limited, physical evidence was received.
The submissions are of no assistance and proceed primarily on the mistaken belief that in law the essential element in the establishment of common law rights is proof of first adoption and use. It is not. The foundation of unregistered trademark rights is a proven reputation in the asserted trademark such that use of the same term by another would involve a misrepresentation and potential damage to the person or business associated with that reputation.
Moreover, Respondent correctly contends that the disputed domain name is comprised of generic terms which have been used by a number of third parties including “Austin Pain Therapy Associates, Inc.” and “Austin Pain Society.”
Whilst the majority of UDRP panelists have taken the approach that the descriptive or generic character of a domain name is a factor best considered in the context of paragraphs 4(a)(ii) and/or (iii) of the Policy, the potential non-distinctiveness of the trademark nonetheless remains an issue germane to the determination of trademark rights.
In that regard, the place name, “Austin,” in combination with the ordinary word “pain,” for pain management, do not lend themselves generously towards trademark protection, thus leaving Panel with the awkward task of deciding whether Complainant has done what is necessary to prove trademark rights in an otherwise descriptive term which other traders may wish to use, and as the evidence shows, do in fact use in some form or another.
That task is best approached from the basic proposition that Complainant is required to show rights, not exclusive rights. The determination must then be moderated by the observation that, in general terms, UDRP panelists have approached the proof of trademark rights in keeping with the spirit of the Policy, the aim of which is to provide a quick and effective means of combating abusive domain name registration, and not as a rule with the rigor with which a court might scrutinize a claim.
The physical evidence is largely undated and unimpressive.
Nevertheless what can be usefully distilled is that the August 2012 edition of a publication entitled Austin Business Journal reports that Complainant was founded in 2002, has nine clinics and 155 employees. Another article, “Top Doctors”, from austinmonthly.com in January 2013 lists one of Complainant’s medical practitioners and partners.
Finally, a piece of evidence shows that in November 2012 another practice partner gave a presentation to other professionals which counted for “CME” (which Panel assumes in the lack of explanation stands for “continuing medical education”) points.
Although this evidence is meagre it nonetheless points to a medical practice with a substantial employee base providing specialist services with geographical spread outside simply the city of Austin and which has a degree of stature and respect in its field of expertise.
On balance, Panel has come to the conclusion that Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.
It remains only for Panel to find that the disputed domain name is legally identical to the trademark
The publicly available WHOIS information identifies Respondent as “Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights.
There is no evidence that Complainant has authorized Respondent to use the trademark. The domain name is not in use, has never been used and is for sale.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. ‘
Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services.
Respondent goes on to state that it has a particular interest in domain names with “a geo-locational value” and in names somehow related to the medical field. It provides evidence that it has registered, for example, <austinelectrolysis.com>, <austinmeditation.com>, and <austinneurologist.com>, along with names such as <augustapain.com>, <bocaratonpain.com>, and <centralvalleypain.com>. In short, Respondent claims to have registered 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”
Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy.
However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.
If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another.
Whether this issue has been approached as a matter of “willful blindness” of third-party rights, or constructive knowledge of those rights, the same result has followed and so it follows here. Panel finds that Respondent has no rights or interests in the disputed domain name.
Panel makes two preliminary findings.
First, it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark.
Accordingly, it would be open to the Panel to decline to find bad faith registration.
Secondly, Panel also accepts that on a balance of the evidence it would appear that, contrary to Complainant’s submission, it was in fact Complainant who first contacted Respondent about purchasing thedomain name for USD 6,000.
There is no evidence that Respondent reached out to Complainant.
However, Panel has come to the view that Respondent’s actions nonetheless fall under paragraph 4(b)(i) above.
In terms of paragraph 4(b)(i), it is indisputable that (a) Respondent’s business requires that it registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration, and (b) Respondent would do so for valuable consideration in excess of the out-of-pocket acquisition costs.
It therefore remains only to consider whether it had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant” and it stands to reason that is the only class of persons to whom the domain name would have interest.
Panel finds registration and use in bad faith.
So this is a troubling for large domain holders since the generic domain was given to a common law trademark holder on a generic term seemly just because the owner of the domain was a large domain holder.
Could HugeDomains have gone for a 3 member panel instead of 1 person?
It was a fairly recent registration, I wonder if they had owned it much longer if the outcome would be different?
Konstantinos Zournas says
These panelists deserve a lawsuit.
Konstantinos Zournas says
Robb it was a 3 member panel.
With these panelists? No.
Sean Sullivan says
One thing I have noticed with HugeDomains is that they seem to register a lot of variants after a website has launched. In some cases they’ll grab the plural or the singular of the newly launched site, some of which are blatant ™ infringing domains of well established companies. Which the only explanation for that model would be to simply force companies with the original domain that promoted HugeDomains to register the variants in the first place to at some point, have to go and purchase the one that HugeDomains picked up at reg and or at drop. They’re not mentioning it in the UDRP decision, but I’m sure it is known.
Mike you’re right, fighting this and risking tarnishing their record wasn’t a great move for a domain they most likely paid reg fee for. I think turning down $6K makes it look even worse. Slippery slope…
Once they have a few more of these decisions under their belt they might find it difficult to defend the domains that they aren’t infringing on IP rights with.
Some good comments already at http://domainnamewire.com/2014/03/20/udrp-panel-gets-austinpain-com-decision-wrong/#comments
The panelists opined that the domain name was legitimately owned previously by Interventional Pain Associates, with a registration date of July 27, 2009, and gave the complainant at least 3 Pinocchios for asserting that they owned the domain name once in the past; so, if a third party, Interventional Pain Associates, once owned the name legitimately, it means it cannot belong to the complainant.
It’s true that the panelists tried to placate the domain name industry by declaring it legitimate business, BUT wrong decision is wrong decision; and decisions are not only based on wrong or right, some are puzzling, some are stupid, some are dumb, and this one bears all of those. It’s obvious the panelist are smart, and are aware of proper jurisprudence, so why not do the right thing?
Robert Bushrood says
since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
Associates isn’t relevant?? The arbi”traitors” are idiots and this proves it. Austin Pain IS generic and could be used by many companies in the healthcare industry. The udrp system is a license to steal generic names. Time for HugeDomains.com to register AustinPainAssociate.com or AustinPainSucks.com for $10 and put up a gripe/information site showing anyone who visits how ridiculous the udrp system is and how dense many of the arbi”traitors” are. Nonsense. If HugeDomains owned AustinPainAssociates.com then that’s a problem but dropping “Associates” and saying it’s not relevant??? Disgusting people.
Robert Bushrood says
If you used their reasoning then if I own CarAssociates.com I should then be entitled to Car.com, etc,etc??? They are a joke.
this is not going to end until domainers decide to get together and donate into a legal defense fund that will charge complainants and icann with civil and criminal racketeering. you set it up and i’ll donate the first hundred bucks.
Leonard P Britt says
I mentioned to my Godaddy rep the idea of UDRP insurance. There would be some challenges for a company offering such a service. They would have to have some filter to not accept domains which are obvious trademark violations and they would have to the resources to address numerous simultaneous complaints. From a domainer perspective you would only pay for this insurance on higher-end domains – not the ones being sold for $500. We’ll see if Godaddy ends up being the first to market or if some other company can offer a reputable service beforehand.
Robert Bushrood says
Maybe ICA could start a division for legal challenges and split the revenue with the domain owner from any successful judgments in a REAL court?? The domain owner would keep the domain and any monetary judgments would be split between the 2 parties so ICA could put their share back into the fund for the next theft attempt??
Richard S says
The owner of this domain has the funds to defend it, and should have taken that offer on a reg fee domain of theirs. Seriously at the end of negotiations should have backtracked, and closed. This is a bad call.
Which was it .. a one person or three person panel? A bit surprised they turned down the offer… I wonder what HD countered with?
Sean Sullivan says
@Mike do you think that maybe the fact that they have a BIN of $25,550 on AustinPain.com vs LosAngelesPain.com at $1,395 or BocaRatonPain.com for $2,095 played a part in this? There are tons of GEO + Pain.com available for reg fee, like DelrayPain.com. Delray is the rehab capital per capita in the US, where’s HugeDomains on that one? Those other domains, all previously owned by end users…
They turned down a $6K offer, more than 3X their average BIN for a larger market.
It’s a dangerous business model, especially when you start getting greedy and forcing people to bring UDRP filings.
I feel like individual domain investors should save their outrage for cases where its applicable. To me, it looks like they are only going after GEO+Pain.com related domains formerly owned by end users who let them drop. Then HugeDomains got greedy and turned down $6K on a $10 domain, and this is the end result.
Robert Bushrood says
It’s a generic domain plain and simple. They could have asked a million for it and it is still a generic domain. The panel was wrong and went way out of their way to help this company steal it. Should Whisky.com have sold for less than 3.1 million because it was free when it was registered? There are dozens of trademarks with the word whisky in them. With the panels reasoning all of the whisky trademark holders should have a shot at Whisky.com. Nonsense.
Gulab Jamon says
The UDRP case for austinpain.com is WIPO Case No.: NAF 1536356 which shows that it was a 3 party panel:
Debrett G. Lyons (chair)
the Hon. Charles K. McCotter, Jr (ret.) of McCotter Ashton
Houston Putnam Lowry of Brown & Welch
They say there model is legitimate yet they have no legitimate use if another has COMMON LAW so the problem then is really the model of buying and selling domains. “However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.” So Trademarks of “Common Law” come forward and win the domains, owners better be aware and consider there business models and show interest beyond owning it to sell it but owning it to build a business and make a living. The good news is domains purchased back in 1998-2002, etc. will give me common law rights over trademark owners who steal the ideas but file trademarks and lie to the government saying no one else is using that mark in commerce. Our biggest threat to the domain industry is the legal process. RISK and REWARD, its much easier to file in WIPO and take your chances then to buy it on the open market.
Sean Sullivan says
@Robert I don’t think that you understand fully how UDRP works and what is considered a bad faith registration. I also think that a better analogy per your question might be, if there was a “Texas Whisky Company” and they owned TexasWhisky.com they wouldn’t have rights to Whisky.com.
However if HugeDomains picked up TexasWhiskey.com the alternate spelling or even TXWhisky.com after “Texas Whisky Company” let those two domains drop, do you really feel that their registration of those domains are in good faith?
If a company registers a domain solely for the purpose of selling it back to the original owner, or the alternative, one of their competitors, that is pretty much going to be viewed as “bad faith” by a UDRP panel.
A good website with a lot of free information about TM’s and UDRP is http://www.WIPODefense.com
Tony Lam says
“… pigs get slaughtered…”
$6,000 is more than fair for this domain…
Tony has been reading him some Mark Cuban. I’m not sure how asking price is relevant here at all.
This was an awful decision. They failed to establish bad faith, basing their decision on paragraph 4(b)(i):
“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;”
How can they allow Austin Pain Associates to claim a trademark they don’t have given the existence of some of these companies indexed on just the first three pages of Google?
It’s also amusing that the search term “Austin Pain” will now include all of the UDRP articles written about this domain name.
Robert Bushrood says
AustinPain.com is a generic name. There was no bad faith and Huge could have asked a million bucks for it. If they were running AustinPainAssociates.com ads on it then that’s a problem. I don’t think they were.
The UDRP system needs to be overhauled. CIRA.ca has a much better system. Some key differences stop rdnh and they also award fees to the respondent if it is shown that the application was bogus. The complaintant also has to pay all fees for the hearing.
AustinPain.com is a generic name that could be used by many, many healthcare companies in the Austin area. When the arbi”traitors” said “since the word “Associates” adds nothing more of value to the expression “Austin Pain.” they PROVED the system is a joke and made fools of themselves. If you can’t afford the price of a generic domain then get lost.
Just because someone doesn’t “develop” a domain doesn’t mean they are not entitled to keep it.
Actually it does. Read anti trust laws. It’s like saying genocide isnt happening because no one is dying. lazy understanding by people who have not brushed up on actual law regarding these matters. you cannot snatch lapsed domain names of trade marked buisnesses and sell them back at rip off rates. It is against the law. of course the average buisness cannot afford to arbitrate most of the time due to lack of money, time, or even expertise in doing so. and here a shill like you advocates charging these buisnesses more opportunity cost than the giant company extorting them.
Jon Schultz says
“That task is best approached from the basic proposition that Complainant is required to show rights, not exclusive rights. The determination must then be moderated by the observation that, in general terms, UDRP panelists have approached the proof of trademark rights in keeping with the spirit of the Policy, the aim of which is to provide a quick and effective means of combating abusive domain name registration, and not as a rule with the rigor with which a court might scrutinize a claim.”
Pure bullshit to rationalize a corrupt decision from panelists who are biased against domainers.
The Panelists took time to make proper finding regarding the facts of the matter, and even a sounder discussion of it. In a stunning inexplicable verdict, decided the case based on who is bigger, with more employees, or more moral. That’s antithetical to
…our system. The Panelists played the moral card by being philanthropic to a Nobel profession, except they were not giving away their own stuff; it’s almost like giving sex.com to a sex therapist because ‘therapist’ does not add anything to the name. Bizarre.
Personally, I believe one Panelists did this, while the other two got lazy, 3 people
… cannot be crazy at the same time, as the Chinese say.
Domain front running and cybersquatting will eventually phase out and be seen as the criminal enterprise it is.
Taking a domain that you have NO business with other than to line your pockets at the expense of the populous is sickening.
Found this doing research on HD after they snagged an expiring domain directly related to my businesses. It was previously squatted in bad faith, full of ads as a generic landing page since being swiped out of my hands right after checking availability years back when I first started.
Justify your ethics all you like, but this reign of domain hijacking and extortion WILL end. The web, great as it is, is still in its infancy.
The author is completely misrepresenting the law. These guys are objectively domain squatters and regularly buy up lapsed domains with the intent to deprive them to honest buisnesses who cannot afford the legal battle it would take to persue a case against cybersquatting. They are criminals and like warrenty is void if removed stickers the only reason they aren’t sunk is because the people they victimize cannot afford to do anything about it due to time and money constraints. It’s not the panel that should be sued but the company. preferably straight 6′ under.
Familiarize yourself with the law. Cyber squatting is an anti trust crime.
This is not going to end until citizens decide to get together and donate into a legal defense fund that will charge cybersquatters like HugeDomain civil and criminal racketeering and profiteering. You set it up and I’ll donate the first hundred dollars. Alternatively, someone should set up a fund calling for the assassination for the heads of the cybersquatting companies, putting them on an assassination blacklist through the dark web. When they fear for their lives, it will put a quick halt to this evil unethical behavior, racketeering, profiteering, cybersquatting, ransoming, and similar illegal profiteering.