UDRP - Gallup Poll vs New Mexico - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**hiOsilver** · 03-01-2004, 03:16 PM

I register a lot of city domains, lately a lot have been .info, cities being a very good application of the .info extension. I regged Gallup.info, as in Gallup, New Mexico.

So, I received a UDRP notice from the Gallup Organization (as in Gallup Poll) and they have their website at Gallup.com.

It is my standard practice to sell some of these city domains, to pay for the cost of acquiring more of them. So, the Whois does say Domain Name 4 Sale. At some point in the future, probably at least a year or two away, I plan to start developing the city domains. In the mean time, most are pointed at a Pay Per Click page. Gallup.info currently points to Roar (Fabulous.com PPC site).

Obviously, no one looking for the Gallup Organization would be likely to look at Gallup.info. But, they are alleging that my registration is confusingly similar.

I am tempted to fight this one (I have never fought a UDRP before) out of principle. As a business decision, I should probably just give up the domain. I would probably sell the domain for around $1000 today, although I think that it will be worth a lot more in a year or two.

It is interesting that the in-house attorney for Gallup chose to go straight to UDRP without even contacting me first. They are paying for a 3-person panel from the get go.

I never regged the name with the idea of selling it the Gallup Organization. Even though I knew of them, I never figured on selling to them. After all, they could have regged the name for peanuts during the .info sunrise period. For that matter, someone else held the name for 2 years before I picked it up 2 months ago in a drop.

The attorney for Gallup already told me that they will not pay more than the reg cost for any name that they feel is infringing their TM rights.

I probably need attorney support or full representation to fight this properly. Any of you excellent domain attorneys out there interested? I would also be interested in opinions from non-attorneys.

**draqon** · 03-01-2004, 03:33 PM

Here's my advice, tell the UDRP panelists every one of the other city domains that you own. That will provide evidence that you were registering city names, rather than names the infringe a trademark of Gallup.

Second, immediately phone the Gallup attorneys, informing them that you registered this domain in good faith to develop it into providing information on the city of gallup, and that you insist that they withdraw their UDRP immediately. Its not very likely they will do so, but worth a call.

**hiOsilver** · 03-04-2004, 03:01 PM

Quote:

Originally Posted by draqon

Here's my advice, tell the UDRP panelists every one of the other city domains that you own. That will provide evidence that you were registering city names, rather than names the infringe a trademark of Gallup.

Second, immediately phone the Gallup attorneys, informing them that you registered this domain in good faith to develop it into providing information on the city of gallup, and that you insist that they withdraw their UDRP immediately. Its not very likely they will do so, but worth a call.

Dragon,

Thanks for your excellent suggestions. I have responded to the Gallup, Inc. attorney and asked her to withdraw the complaint.

In checking the records, I found 5 previous UDRP cases initiated by Gallup, and they won 4 out of 5. Those won by Gallup were for names like africagalluppoll.com, galluppoll.com and thegalluppoll.com, which were all fairly obvious and easy cases for Gallup to win. So, it appears that they have adopted a policy of "file UDRP first and ask questions later". I really will not mind fighting back if they do not withdraw the complaint.

And thanks to DotComGod for your inspiring posts elsewhere on this forum. The more that we fight back when we have legitimate interests in a domain, the less likely that TM holders come after us willy-nilly.

**OnSpec** · 03-04-2004, 03:28 PM

If it were me, I would fight as well. Remember, the onus is on them to prove all 3 tests. If the situations is as you claim, and obviously you have a pattern of buying city names, it seems that they would have a very difficult task proving that you registered the domain in bad faith.

Good luck.

**StockDoctor** · 03-04-2004, 03:36 PM

They might be able to retract this one without incurring the extra fees if the panel hasn't been selected yet. Tell them they are in for a battle and draw up that business plan for the development of the rest of the cities and show them your cards. Tell them you won't fight this is you are compensated for the name and your time. They may realize they have a fight on their hand. You have quite a bit of precedent on your side with the location names so they may give in. If not, fight em. Check other cases and cite the rulings. Don't just give in.
Doc

**hiOsilver** · 03-04-2004, 03:47 PM

Quote:

Originally Posted by Stocdoctor

They might be able to retract this one without incurring the extra fees if the panel hasn't been selected yet. Tell them they are in for a battle and draw up that business plan for the development of the rest of the cities and show them your cards. Tell them you won't fight this is you are compensated for the name and your time. They may realize they have a fight on their hand. You have quite a bit of precedent on your side with the location names so they may give in. If not, fight em. Check other cases and cite the rulings. Don't just give in.
Doc

Doc,

Thanks for your suggestions and encouragement. And how did you pick up Minnesota.info and VirginIslands.info?

Onspec,

Thanks to you as well!

**DaddyHalbucks** · 03-05-2004, 03:02 AM

It seems like you have a chance at defending this.

Have a look at this thread too, if you have already seen it "Geographic Names As Fair Game"==>

http://www.dnforum.com/f26/geographic-names-fair-game-thread-46842.html

**hiOsilver** · 03-05-2004, 03:35 AM

Hal,

Thanks for the comments and for the link to the very relevant previous thread. A lot of good decisions there.

**hiOsilver** · 03-05-2004, 03:37 AM

As things stand now, I need to file a response. I received the formal notice today. So, I have to nominate 3 potential panelists. Anyone have some recommendations for panelists? The Complainant asked and paid for a 3-member panel. I guess that I could go to the Respondent-favorable geographical decisions and pick names from there.

**Sharpy** · 03-05-2004, 04:18 AM

Keep us updated please.

**JuniperPark** · 03-05-2004, 04:37 AM

Tell them you took a POLL here, and SURVEY SAYS:

Q. Will Gallup win?

Gallup will lose 100%
Gallup will win 0%

**draqon** · 03-05-2004, 05:37 AM

**DaddyHalbucks** · 03-05-2004, 03:05 PM

A few attornies I would recommend to write your response==>

Zak Muscovitch [www.muscovitch.com]
Steve Sturgeon [www.domainesq.com]
Charles Carreon [www.mediaesq.com]
Ari Goldberger [www.esqwire.com]

**hiOsilver** · 03-08-2004, 04:44 PM

I have decided to fight and have just engaged one of the best attorneys in the business: Ari Goldberger

**Duke** · 03-08-2004, 05:13 PM

Quote:

Originally Posted by hiOsilver

I have decided to fight and have just engaged one of the best attorneys in the business: Ari Goldberger

Game Over. You Win!

**Ari Goldberger** · 03-10-2004, 12:07 AM

Quote:

Originally Posted by Stocdoctor

They might be able to retract this one without incurring the extra fees if the panel hasn't been selected yet. Doc

Unfortunately, the NAF is incredibly strict with refunds. They offer NO refunds of the Complaint fee once it is filed. Even if the Complainant changes its mind before the Complaint is officially noticed! The only refund NAF offers is of the 3-member panel fee if the case is withdrawn.

WIPO, on the other hand, does offer a refund if the case is withdrawn prior to the Panel being appointed.

**hiOsilver** · 03-24-2004, 03:10 PM

Well, Ari Goldberger has prepared the response and we are sending it off today. I will keep you all informed of the results.

**DaddyHalbucks** · 03-24-2004, 03:27 PM

hi0silver wrote:

Well, Ari Goldberger has prepared the response and we are sending it off today. I will keep you all informed of the results.
++++++++++++++++

Sounds like a slam dunk --but here's wishing you some extra GOOD LUCK anyway!

Any action such as a UDRP or lawsuit is always a crap shoot.

I have heard great things about Ari. A good lawyer can help sway it in your favor.

**gph** · 03-26-2004, 05:36 PM

In these types of situation - if the Complainant loses the case, do they have to pay the Respondent's legal costs?

gph

**hiOsilver** · 03-26-2004, 05:50 PM

Quote:

Originally Posted by gph

In these types of situation - if the Complainant loses the case, do they have to pay the Respondent's legal costs?

gph

No. That is part of the business decision that is involved in deciding to fight. In my case, I own many city domains, especially .info, so a decision in my favor should be a good investment in bolstering my portfolio. A loss, on the other hand . . . So, that is an important reason why I felt it was well worth paying for Ari, who has a great track record in similar cases. I can say that I have enjoyed working with him. The fact of the matter is that I have paid Ari more than I would have sold the domain for before the UDRP was filed.

Just received a C&D letter from Osram Sylvania, who happens to own Sylvania.com. They want me to hand over Sylvania.info. Sylvania is a city in Ohio, in addition to being a lighting company. Hopefully I can resolve this one before going to UDRP.