UK Resident Gets Sued By Startup For .com He's Owned for 16 Years

[accelerator]

Hi Guys

A British guy is currently getting sued by a startup for the domain WorkBetter.com. He refused to sell and the startup then decided to sue him in a NY court. The British guy has done nothing wrong in my opinion, and it's an interesting case, see:

http://techcrunch.com/2015/07/03/startup-sues-a-domain-name-owner-to-grab-a-16-year-old-url/

Rgds

 

[martin-s]

Interesting (and relevant) story. Thanks for posting.

 

[scottmccloud]

Interesting (and relevant) story. Thanks for posting.

My thoughts too, will be interesting to see how it pans out.

 

[nick-harper]

Tell them to do one, surely they would have checked domain names before branding?

 

[woopwoop]

Really interesting read - clear that the attorney for Kneen knew her stuff!

In all of the specificities of the dates (domain registration, USPTO registration, emails/LinkedIn messages) I was surprised to see the date on the last page ( page 28 ):

Dated: July 7, 2015 (3 days in future) but I guess this is when the plaintiff's attorney will receive a FedEx envelope.

 

[Adam H]

Silly move for a start up with any kind of risk of big publicity like this, I know any publicity is said to be good......in theory....but in the start up circle being a dick head for all to see in my opinion isnt the brightest of moves.

Will be interesting to see how this goes though..........cant see the result being a surprise and a big waste of money for all parties i would think.

Did i read that right this was initially over $500 for the domain ? The domain owner probably saw sense and realised he could get more........who could blame him.

 

[tifosi]

About as close to reverse domain hijacking as it comes?

And would the court have ANY legal jurisdiction over this to force the transfer? Surely it would still have to go to a UDRP? If the registrar was forced to transfer, the original registrant could start a udrp against them.

Weird case that has massive ramifications, as much for the role of the udrp & icann as anything else.

 

[foz]

Pain to defend. The hook is the ACPA.

https://en.wikipedia.org/wiki/Anticybersquatting_Consumer_Protection_Act

The ACPA also provides that the trademark owner can file an in rem action against the domain name in the judicial district where the domain name registrar, domain name registry, or other domain name authority registered or assigned the domain name is located if (1) the domain name violates any right of the trademark owner and (2) the court finds that the owner (a) is not able to obtain in personam jurisdiction over the person who would have been a defendant under 15 U.S.C. § 1125(d)(1); or (b) through due diligence was not able to find a person who would have been a defendant under 15 U.S.C. § 1125(d)(1) by sending a notice of the alleged violation and publishing notice of the action.[20] This provision is rarely used, however, because many trademark owners can achieve the same results through a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding.

A valid process with .com being Verisign operated, USA based.

 

[gimpydog]

About as close to reverse domain hijacking as it comes?

And would the court have ANY legal jurisdiction over this to force the transfer? Surely it would still have to go to a UDRP? If the registrar was forced to transfer, the original registrant could start a udrp against them.

Weird case that has massive ramifications, as much for the role of the udrp & icann as anything else.

The UDRP is one method to resolves disputes. It is NOT the only method.

Some registrants have been know to go to court simply to have a reason to suspend UDRP proceedings. A tactic popular with Tucows

 

[accelerator]

Some thoughts:

1) Clearly the domain owner has done nothing wrong. They registered the domain long before the startup ever existed.

2) This legal action is like challenging the domaining business model, i.e. are domainers allowed to register a domain (that is a term that does not have intellectual property protection), with a view to selling it. Answer, of course they are, it's an accepted business practice.

3) Complainant appears to be challenging domainers' rights to register an unrestricted term, on the basis that someone may want to use it for their business one day, that they then trademark.

4) A key question is what happens when a domainer owns a valuable domain name, have not used it, but don't have a trademark, and then someone else gets a trademark in that term and then decides to challenge the domainer. Clearly the domainer is not at fault in my opinion, and should not even be challenged.

5) Another question is, how can legitimate domain owners protect themselves against trademark registrations matching their domains? As far as I'm aware, it's not that easy to monitor trademark applications. Is there a free or paid service that allows you to monitor trademark applications for the terms of the domains you legitimately own?

6) In general, what can honest domainers do to protect themselves against malicious challenges like this?

 

[woopwoop]

For me there were two clear points worth considering here:

1. There are still many with an ideology that parked domains should be transferred to people with an idea/business who could "make better use of it". Anti-domainer view point without any understanding of investment in domains and those with a very broad view of cyber squatter. (In this case it was surprising the complainant tried to paint that picture).

2. I felt the complainant's angle was to characterize the renewal (after negotiation) as an abusive registration. I think in some cases, although a renewal isn't a registration, this legal strategy might just work. Something perhaps to be careful of or at least consider in the wording of negotiations.

 

[Adam H]

For me there were two clear points worth considering here:

1. There are still many with an ideology that parked domains should be transferred to people with an idea/business who could "make better use of it". Anti-domainer view point without any understanding of investment in domains and those with a very broad view of cyber squatter. (In this case it was surprising the complainant tried to paint that picture).

2. I felt the complainant's angle was to characterize the renewal (after negotiation) as an abusive registration. I think in some cases, although a renewal isn't a registration, this legal strategy might just work. Something perhaps to be careful of or at least consider in the wording of negotiations.

1. I had someone moaning the other week on another forum ( none domainer forum ) about how i owned a couple of domains which he could have made good use of and he hates domainers all together.......hmm. I asked him whether he hates property investors for buying housing and either renting for later profit or developing with the outlook of later profiting, funnily enough people do not see assets and investments in the same form. Im not really sure why.

2. Surely the complainant couldnt have assumed that because the deal had fallen through that the guy was simply going to let it expire. Wouldnt that open up an influx of people making offers close to expiry time in hope to drum up some negotiations...........then when it failed go down the "renewal" legal route. ?

 

[accelerator]

A domainer can't ever be squatting really, because if someone subsequently likes the term and trademarks it, they don't get an automatic right to words in a given domain. Firstly, trademarks only cover certain classes for use. Secondly, the trademark owner can still register an appropriate domain, it's just they might have to add a word or use a different extension.

 

[woopwoop]

1. I had someone moaning the other week on another forum ( none domainer forum ) about how i owned a couple of domains which he could have made good use of and he hates domainers all together.......hmm. I asked him whether he hates property investors for buying housing and either renting for later profit or developing with the outlook of later profiting, funnily enough people do not see assets and investments in the same form. Im not really sure why.

2. Surely the complainant couldnt have assumed that because the deal had fallen through that the guy was simply going to let it expire. Wouldnt that open up an influx of people making offers close to expiry time in hope to drum up some negotiations...........then when it failed go down the "renewal" legal route. ?

Completely agree with #1.

I think that the complainant knew that it was going to be renewed and had some misguided plan that through his communication leading up to the renewal that he was documenting bad faith and he thought he could convince the court that the renewal is a bad faith registration... "Err judge this guy has no plans to use the domain, was negotiating to sell it to me, I have a legitimate purpose for it, and now he's renewed it although he's only renewing it because I want it and he want's to sell it to me".

The pieces don't really fit together but sometimes weird things happen in court, DRS, UDRP, etc.

I think that he was ill advised by his attorney and the defendant had someone who knew what she was doing. It was impressive from every angle she shot this guy down even identifying that the "complainant comes to this court with unclean hands". He basically documented in a trademark application that his use of the mark was in using an email address. However the domain for the email wasn't registered at the time of the TM application. Also it seems that he tried to initiate the domain transfer "accidentally" and the defendant then received the authorization email from the registrar.

Really amateur and off-putting for anyone who would want to do business with this guy.

A domainer can't ever be squatting really, because if someone subsequently likes the term and trademarks it, they don't get an automatic right to words in a given domain. Firstly, trademarks only cover certain classes for use. Secondly, the trademark owner can still register an appropriate domain, it's just they might have to add a word or use a different extension.

They have to be careful what they put on their sites and how the respond to communication over the domain. It could be a case of passing off (more serious than TM infringement if visitors to the site believe they are doing business with the other company (although that isn't the case with this story).

 

[max_rk]

Lawyers are the people that never give up (work) hope in a case. Filing court case or DRS is way to get other party talking or expose some weakness in defence. Layers always win, they get paid per hour no matter what.
Money talks!