DomainTools Blog

We just got back from the International Trademark Association (INTA) conference in San Francisco! It ran May 14-18 and we had a great time meeting a good number of the 8,500 attendees from 140 countries. Each day, had engaging conversations about the industry, DomainTools, and it was awesome to see customers come up and introduce themselves with “We use you guys all the time”. For us, it was also enriching to hear about specific anecdotes about how specific tools like Reverse Whois, Trademark Alert, Whois, etc. are being leveraged. Be sure to read our press release about our INTA attendance if you haven’t seen it yet.

Here is a picture of our booth and staff before the exhibition hall flood gates opened the first day.

In just a few weeks, we will be showcasing DomainTools once again – this time at SMX Advanced in Seattle, June 7-8. If any of you SEO and Analytics gurus are in town, be sure to stop by booth #23 to say hello! By the way, DomainTools is looking to add an SEO and Analytics Manager to our incredible team! If you are interested or know of anyone with this expertise, feel free to read the full job description here.

In my last post I covered the UDRP process, now it is time to look at Reverse Domain Name Hi-Jackers. People who file complaints to steal domains from domain owners. As sure as domains are getting more valuable, everyone can rest assured that there will more legal action and not less action. More legal action signals that more value. If people want domains they are either going to buy them fairly or try and fight for them in court. I want to cover the UDRP case of Barnes & Noble vs Noble.com in this post. Noble.com was registered in 1994 long before Barnes & Noble started their website. Just looking at the title of the UDRP it would be easy to imagine that the big corporation is trying to steal the domain in a UDRP fight. Reverse Domain Name Hi-Jacking is when someone abuses the UDRP process and tries to legalese the current owner out of a domain. Domainers have been victims of this type of attack for a long time. However, most UDRP cases are straight forward infringement and are easy to decide. Every once in a while you get an over reaching corporation that is greedy and thinks they can steal a domain name by abusing the process.

The Noble.com case is not so clear when you review the history of the domain. Just look at the Thumbnail history on the website…

Updated: 2007-10-05	Updated: 2007-07-24
Updated: 2005-05-04	Updated: 2004-12-22
Updated: 2004-09-13	Updated: 2004-07-29

We can see that Noble.com is redirecting and displaying Amazon.com ads. It is not very hard to argue that consumers would be confused if they went to a website called Noble.com and they saw an online bookstore. You can do a lot of things with the domain but advertising and redirecting to Amazon.com is not one of them.

The UDRP case was dismissed and Noble.com stayed with the original owner. UDRP has a three step test; Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

• Is the domain confusingly similar: YES
• Respondent has no rights or legitimate interests: NO
• Registered in bad faith and that it is being used in bad faith: NO & YES

Had this case gone before a US court I am sure it would have gone the other way. Just because someone legitimately own a generic domain name doesn’t mean they are allowed to confuse people. A good example would be if someone like Goggle.com, a dictionary word, had started a search engine on their website; now that would confuse the public. Selling Goggles on Goggle.com would be reasonable but operating a search engine would not be. It all depends on how you use the domain name. UDRP cases have a higher burden then court cases. Courts don’t have a three prong test like the UDRP does.

So inclusion some cases that look like Reverse Domain HiJacking aren’t as clear as they appear on the surface. Just based on the Title of this case I thought it was initially Reverse HiJacking but after reviewing the Thumbnail history I see bad faith in the use of the domain owner.

A lot of people wonder how to file a case against a domain owner. Instead of going to court there is a process built into the ICANN process. Every domain owner agrees to be bound by the Uniform Dispute Resolution Policy (UDRP) when they register a top level domain such as DotCom, it is part of the contract that most people never bother to read when they are buying a domain.

There are currently three providers that hear cases and make binding rulings. A UDRP is much cheaper then a court case and is preferred if you think you have an easy decision. However I would encourage anyone that wants to file a complain to first approach the domain owner and see if you can work out a deal. Sometimes the owner is behind privacy and it is not possible to contact them so you will be left with just filing.

Here are the three providers:

• Asian Domain Name Dispute Resolution Centre [ADNDRC]. It has three offices: Beijing, Hong Kong, and Seoul .
• National Arbitration Forum [NAF] and their supplemental rules.
• World Intellectual Property Organization [WIPO] and their supplemental rules.

Top Citied Cases in Response:

Cited Case Number	Domain Name	Frequency
D2000-0161	zero.com	97
D2002-0189	paparazzo.com	94
D2000-1654	tammy.com	72
D2000-1840	firstamerican.com	70
D2000-0752	shutterbug.com	70
D2001-0031	sweeps.com	68
D2001-0764	matress.com	67

Top Citied Cases in Complaint

Cited Case Number	Domain Name	Frequency
D2000-0003	telstra.org	1385
D2000-0163	veuveclicquot.org	484
D2000-1409	calsony.com	322
D2000-0028	cellularonechina.com	310
D2000-0226	christiandior.com	265
D2000-0137	xpediatravel.com	261
D2000-0847	madonna.com	235
D2001-0903	okidataparts.com	227
D2003-0696	pepsiadventure.com	216

Keith Malley thought that he would predict the future by registering The Simpsons Movie.com, which Fox would natural want. His hope was to cash in on how smart he was. He offered to sell the website to Fox for $50,000. His rational was pretty logical, if the movies makes a few million then what is $50,000 for the best domain name. What Keith did not realize is that this is an illegal practice. People are not allowed to register domain names which target a company or individual. Fox refused to pay the ransom demand and took the case to WIPO (The World Intellectual Property Organization). WIPO then ruled against Keith and ordered that the domain name be transferred to Fox.

The lesson to learn here is that while you might be able to predict the future and register the domain name of something that will happen, don’t expect to profit from it. Register generic domain names. For example, Summer Movies.com or Best Movies.com (I have not visited these sites yet). The rule in the domain industry is that if the domain is registered in “Bad Faith” then the owner can lose the domain. Keith Malley is now labeled a cybersquatter and that will actually hurt his case on any other domains that he is challenged on. Keith got off easy, there is a law on the books that allows Fox to sue for damages of up to $100,000. Keith would have looked pretty stupid had Fox sued. Fox has a great case and can actually still sue if they want. They did the quick thing and went through an ICANN UDRP procedure to get the domain name quickly. They have lost a lot of visitors that went to that domain name. I am sure they were confused to see Keith’s web page instead of information about the movie.

On a personal note, I can’t wait for the movie to open this Friday. Every industry in the world is affected by domain names, The Simpsons Movie.com is just another example of how everything will have a domain name in the future.