Yesterday we published a post about the domain name Wi.com which is in auction at Namejet.com and was the subject of an unsuccessful UDRP filed in 2015.
The attorney who successfully represented the current owner of the Wi.com, Stevan Lieberman in the 2015 UDRP has just left a comment on TheDomains.com post offering to file a response for the buyer of Wi.com if a UDRP is filed against the domain name, with some very logical conditions.
Here is the statement of Mr. Lieberman:
“”Someone buying a domain for 100’s of thousands of dollars has to be sophisticated and will have done their research before spending that kind of money. Further, yes, a domain is a domain name and it can be used for anything under the sun so long as it does not infringe a senior users trademark rights.
Accordingly, I’ll make an offer. If the person who buys WI.com gets a UDRP and they have done a trademark search to ascertain that they are not infringing on another entities rights before they use the domain, and do not act in violation of the results of that search (re they do not act in bad faith) then I will provide a response to the UDRP claim for free.
The point here is I have already written one UDRP response so most of the work is done and I think my offer will settle this issue, at least pertaining to the UDRP once and for all.”
I think that is a very generous offer and shows he is willing to back up his opinion on the domain name which he also posted to TheDomains.com yesterday:
“I do not know how many times I have told clients this, but domain names and trademarks though related, are not the same thing. The rights derived from each are very different. Trademark rights flow from use of a mark for goods or services in interstate commerce or within a state’s (countries) boundary. Domain name rights are derived by way of a domain name owner’s contract with a registrar. Although a trademark owner has common law, federal or state rights to particular terms that constitutes their mark or trade name, it does not necessarily translate that this owner, above all others, have rights to a domain name consisting of the trademark owners terms.
Further, an UDRP (Uniform Domain Dispute Resolution Policy) is an appealable arbitration WHICH CARRIES NO PRECEDENCE. In other words when that UDRP is appealed none of the finds of fact or law may be taken as true in a court of law.
When we argued the WI.COM UDRP we made our arguments based on the unique facts alleged by the Complainant and those of our client, the Respondent.
Once a third-party buys the domain name WI.COM all of the facts change. The only lesson that can be learned from the UDRP is the point of view of the Complainant and maybe it could be argued that an entity that buys the domain name is on notice of WICOM’s alleged claim. Every single finding of fact and law stated by the arbitration panel is of no value in a court of law.
Any entity that is going to spend such a large amount of money on a domain name will have done its homework (trademark searches, etc.) and will be aware of any entities that claim an exclusive right in their own country to the two letters WI and will know to avoid the use of the domain for the same, similar, or within the natural zone of expansion, goods and services.
Personally I believe it will be very very hard for any entity to obtain exclusive rights to the two letters WI except in a very narrow listing of goods and services as the term WI is an acronym for so many things. The two letters WI has numerous meanings and purposes around the world and Complainant’s suggestions that it should have exclusive rights to the two letters is not only ludicrous, but shameful as a clear attempt to hijack a million dollar domain name to which they have no right. Some of the better known meanings of WI include, but are not limited to Wireless Communications, Wisconsin, West Indies, West India, Woman’s Institute, etc. A longer list is available at http://www.acronymfinder.com/WI.html. There are of course, in the US and in many other countries, numerous registered and pending trademarks both in the US and elsewhere for the letters, also including, but not limited to (US marks only):
Serial Number Reg. Number Word Mark Live/Dead
86641551 WI LIVE
86424702 WI LIVE
85385993 4174267 WI LIVE
85076785 4388456 WI LIVE
79035974 3431445 WI LIVE
78464043 3062468 WI LIVE
77585776 3714106 WI LIVE
77914060 3945622 WI LIVE
77891670 3915755 WI LIVE
77725452 3718185 WI LIVE
77278792 3430727 WI LIVE
77029898 3518806 WI LIVE
76313266 2743973 WI LIVE
74478980 1888210 WI LIVE
74311430 1769881 WI LIVE
74196189 1700189 WI LIVE
73286195 1193321 WI LIVE
Accordingly, any suggestion of the diminution of value of the domain name based on there having been an UDRP is, frankly, just bunk.
Stevan is one if the few attorney’s I have and continue to recommended people to on domain name matters when asked.
The auction for Wi.com ends today at 4:53 pm EST
The current high bid is $502,000.
Will he represent you for free in court if the domain is lost in arbitration, including attorney fees and damages you may need to pay? Will he give you the investment back if you lose the domain?
One thing is for sure – a rigorous court case would cost WAY more than a UDRP defense. I would be exceedingly impressed if he offered the other guarantees you’ve mentioned.
Nathan Edwards says
Rossner is screwed!
Bold move, counselor!
John M says
Michael obviously Mr Lieberman is an excellent attorney and has made a very generous offer but to state that ” any suggestion of the diminution ” ect is a bit disingenuous. Of course the value is going to take a hit. Look at the offers. Nothing may come of any future litergation but it absolutely puts a cloud on this name at least for now. It’s no different than American Indians clouding the titles of lands with litigation. If you buy for cash with a clouded title you’re 95% certain that it will be settled but absolutely not100%. Excellent post Michael. Thank you.
John M says
Huh what? Don’t know what a clouded title is? I don’t understand your comment.