privelage.co.uk decision

[Whois-Search]

New DRS case has been published:

The Royal Bank of Scotland Group Plc v Robert Morrison

http://www.nominet.org.uk/digitalAssets/8337_privelage.pdf

www.privelage.co.uk has NameDrive adverts and a typo of www.privilage.co.uk

 

[Pred]

well spotted

good posting who-is! oh dear. well obviously 'experts' & agencies & alike are continuing to be as biased to normal people & favouring the large coorporations. no change there then. mind you he didn't put up a defence, but then i don't suppose he can afford legal fees. rbs should have admired his entrepreneuralism & made a smallish offer for it. it's a different word after all. i bet he only gets peanuts from ppc. i bet it shows f all in overture anyhow. they're tightening up. good spot old bean

 

[James]

I don't think he realistically could have expected to win this particular DRS. If he thought he could win, he certainly could have defended himself... Robert Morrison is one of the wealthiest domainers on planet Earth.

 

[owenwww]

www.privelage.co.uk has NameDrive adverts and a typo of www.privilage.co.uk

Actually it's a typo of www.privilege.co.uk - the other one is a typo

 

[Pred]

Top Domainer

I don't think he realistically could have expected to win this particular DRS. If he thought he could win, he certainly could have defended himself... Robert Morrison is one of the wealthiest domainers on planet Earth.

Hi James,
Learn something new every day! cheers for that. :-D
Predator :twisted:

 

[charlie]

Robert Morrison is one of the wealthiest domainers on planet Earth.

i see just from google he's had a number of DRS cases - what his M.O? (pure generics or is typos his bag?) any little stories why hes 'one of the wealthiest domainers on planet Earth'? you have to learn from people who have been successful before

 

[retired_member6]

Ahhh but he aint as wealthy as the richest domainer on planet mars and planet pluto, he's got a way to go yet.

 

[charlie]

Ahhh but he aint as wealthy as the richest domainer on planet mars and planet pluto, he's got a way to go yet.

as far as i know there isn't life on mars or pluto so i doubt domain names are of particular concern on them :mrgreen:

 

[James]

Robert has been in the domain industry a relatively short time... but he acquired lots of typo domains since about 2003 onwards. He then started acquiring more generic names, and late last year I believe sold his typo portfolio for something like $750,000. Any typos he has left he has probably all but forgotten about.

He recently bought malta.com I believe.

He can often be found in the domainstate chatroom if you want to learn from him

James

 

[Whois-Search]

Looks like RBS have gone after and won 3 more names:

http://www.nominet.org.uk/disputes/drs/decisions/?contentId=3243

natwestcards.co.uk
privalege.co.uk

http://www.nominet.org.uk/disputes/drs/decisions/?contentId=3236

privilige.co.uk

 

[Pred]

give in

Hi,
In some ways i can understand when nominet give in, particularly if there is a strong trademark. however when they are giving in to all the misspellings of privelige, you have to ask, are they unbiased?
i know there's icann etc, is it easier for the bigboys to win .co.uk battle ups than tld battleups?
for example, if you own privelege.net (i don't!) what sort of battle would rbs or whoever have to get it off you? would they necessarily win?
cheers, Guy

 

[ragwormray]

makes you wonder just how much of a mis-spelling it takes before Nominet would take the side of the little guy. How about prevelge/privilidge/ etc etc or is it just a case of if you've got shedloads of money to throw at the best domain barristers you can make a case out of next to nothing?

 

[Sequitur]

"when they are giving in to all the misspellings of privelige, you have to ask, are they unbiased?"

It's not Nominet making the decisions, but the appointed experts. Most of the experts are practising IP lawyers, so they're professionally acclimatised to serve big corporations. That said, imho the real problem is that the drafting of the Nominet DRS makes it relatively easy for trade mark owners to get domains transferred - much easier than establishing a case of registered trade mark infringement, for example.

"i know there's icann etc, is it easier for the bigboys to win .co.uk battle ups than tld battleups?"

By my (quick calculations):

WIPO (UDRP) complainants are successful in approx 83% of decisions (using stats since WIPO began handling domain name arbitrations). NAF complainants have a similar level of success, I think.

Nominet stats shows that in the last year complainants were successful in 77% of Nominet DRS decisions.

However, the lower Nominet figure shouldn't necessarily be taken as indicating that Nominet is more respondent-friendly. Differences in the procedure, especially Nominet's mediation service, will skew the stats.

"if you own privelege.net (i don't!) what sort of battle would rbs or whoever have to get it off you? would they necessarily win?"

RBS would have to prove bad faith, which would depend upon the particular circumstances of the case. It would be harder to show bad faith if Privilege is a UK-only brand (?) than with the .uk domains.

Seq.

 

[stender]

In Regards to DRS for a typo.
When these companies come gunning for Joe Bloggs saying "give us that domain" Does Joe usually incur financial loss if he rolls over and says here you go? or is it only if he fights back and you get a court summons?

 

[Sequitur]

In Regards to DRS for a typo.
When these companies come gunning for Joe Bloggs saying "give us that domain" Does Joe usually incur financial loss if he rolls over and says here you go? or is it only if he fights back and you get a court summons?

Unlike court litigation, there are no damages or other financial penalties (or for that matter costs orders against respondents) in Nominet DRS proceedings or in UDRP proceedings.

If what you are doing constitutes trade mark infringement (or gives rise to another cause of action e.g. under the US Anti-cybersquatting Protection Act) then you may be liable for financial penalties and, in some jurisdictions such as the UK, to pay some or all of the other party's legal costs in the dispute.

So, if you are resigned to losing a typo domain name, you won't suffer any financial losses (other than losing the domain) if the trade mark owner makes a Nominet DRS or UDRP complaint. If, on the other hand, it looks like the trade mark owner may bring infringement proceedings against you then you should think very carefully before refusing to transfer the domain.

One proviso to the above: decisions recorded against you can be used in later domain name arbitration proceedings as evidence of an abusive registration or bad faith.

Seq.

 

[stender]

Thanks seq. Just thought when tm'd typo's come up and everyone says reg at your own risk, is there a risk if you'd give it up as soon as requested. Your not gonna argue with microsoft etc...

 

[Jac]

It's not Nominet making the decisions, but the appointed experts. Most of the experts are practising IP lawyers, so they're professionally acclimatised to serve big corporations.

Why would practising IP lawyers be more professionally acclimatised to serve big corporations in the DRS? The only time a lawyer would be 'acclimatised to serve' is in circumstances where they are instructed by a client. No-one instructs the 'experts' in a DRS case except Nominet and this is not really instructing... Nominet simply passes over all the 'evidence' to the appointed expert or experts. For the sake of clarity; Nominet itself is not acclimatised to serve big corporations; it has a responsibilty to all stakeholders whether government, industry, or civil society. The policy and procedure of the DRS equates to the 'rules of engagement'... it is there to guide the 'experts' and they have to act within the policy and procedure written. So it isn't that they are acclimatised to serve big corporations, they are simply acting within the DRS as she is written.

Further to that, there will be a DRS consultation hopefully before the end of the year, so everyone will have a chance to put their viewpoints if they feel the DRS is biased in any way towards big corporations. Nominet is committed to making its systems fair to everyone; respondent or complainant.

Regards
James Conaghan

 

[Whois-Search]

DRS 03676 privalige.co.uk

Has now been set to "Appeal Pending".......

http://www.nominet.org.uk/disputes/drs/decisions/?contentId=2621

Looks like Mr Morrison thought its worth the 3k - will he also now appeal DRS 03719 privelage.co.uk ?

 

[newbie]

One proviso to the above: decisions recorded against you can be used in later domain name arbitration proceedings as evidence of an abusive registration or bad faith.
Seq.

If the domain name is trasferred across during mediation or without argument, does this still count as a decision against you?

 

[Sequitur]

If the domain name is trasferred across during mediation or without argument, does this still count as a decision against you?

Interesting question...

Nominet DRS

The Nominet Policy provides that: "A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows: ... iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern..." (para 3(a)(iii)).

Nominet guidance on the concept of an abusive registration asks: "Does the Respondent have a history of registering domain names which relate to trade marks in which they have no apparent rights, and if so, is this part of that trend? This does not necessarily have to be restricted to .uk domain names: generic endings such as .com and .org may be relevant too." (http://www.nic.uk/disputes/drs/abuse/)

See also: http://www.nic.uk/disputes/drs/decisions/?contentId=2208

UDRP

THe UDRP's equivalent provision says: "For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: ... (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct..." (para 4(b)(ii)).

The WIPO "consensus view" on the application of this UDRP principle is that: "A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks, however the registration of two domain names in the same case is not generally sufficient to show a pattern." (http://arbiter.wipo.int/domains/search/overview/index.html?lang=eng#33)

So...

Under both the Nominet DRS and the UDRP the fundamental issue is not whether the respondent has had decisions against him or her; it is whether there is a pattern of bad faith/abusive registrations. The implication is that domain names you transferred after negotiations or through Nominet mediation could in principle still be "used against you".

However, in practice I would have thought it would be very difficult to get evidence of a respondent's historical registrations unless they have been immortalised in a panel decision. (Are there any public whois databases containing historical info?) If not then, unless the complainant has some special knowledge of the matter (e.g. being the transferee of the domains), transfers by consent shouldn't usually count against you.

A connected point is that, in principle, other domains you hold at the time of the complaint could be used against you. However, in practice, it will be difficult for a respondent to find out about them if they haven't been the subject of a decision.

Sequitur