A pretty sleazy attempted RDNH

[marcorandazza]

In my experience, the doozie arguments usually come from Respondents. But, this Complainant takes an honorable mention.

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0087.html

The domain name was <mathiesen.com>. The owner was Allan Mathiesen. Although the complainant had a registered trademark to MATHIESEN, how the hell could they not have realized that a person can own a domain name that is their actual family name?

I guess I could see exceptions to this rule. Like if your last name was McDonald and you used mcdonald.TLD to forward traffic to burgerking.com. But, the RDNH in this decision was well deserved.

 

[draggar]

The domain name was <mathiesen.com>. The owner was Allan Mathiesen. Although the complainant had a registered trademark to MATHIESEN, how the hell could they not have realized that a person can own a domain name that is their actual family name?

Go ask Sam Adams Boston Lager.

Edit: At least it was rejected - I would have called for reverse hijacking. The complainant made no research to see if the respondent had any legit claims to the name - they just jumped ahead and filed a WIPO.

 

[myst woman]

is there such a thing as an unsleazy attempt?

 

[INVIGOR]

Dude, the NISSAN case trumps all...

 

[draggar]

Dude, the NISSAN case trumps all...

No sense in anyone else trying to compete with that one - it does trump all cases.

 

[marcorandazza]

Except it wasn't a UDRP.

 

[dvdrip]

This is where we disagree.
No matter what crazy use you have for your domain name, if it is your last name they can never never take your domain away in UDRP.
If they do then it's ****ed up.

How in the world does someone named Mcdonald loses his legitimate rights?
If he has burger king ads then it's a trademark infringement. UDRP has nothing to do with that. If you want you can sue his ass away. If you win you can ask for damages, if he can't pay, then take his domain away. It is as simple as that.

Also try to prove that he registered his last name in bad faith. Can you do that? If you do then we live in a crazy lawyered up world.

Finally anyone who thinks that someone registers apples.com and thinks of apple computers, is either perverted or a lawyer. He needs to get out to the real life: Apples are more famous than apple computers!!!

The domain name was <mathiesen.com>. The owner was Allan Mathiesen. Although the complainant had a registered trademark to MATHIESEN, how the hell could they not have realized that a person can own a domain name that is their actual family name?

I guess I could see exceptions to this rule. Like if your last name was McDonald and you used mcdonald.TLD to forward traffic to burgerking.com. But, the RDNH in this decision was well deserved.

 

[marcorandazza]

Go ask Sam Adams Boston Lager.

Edit: At least it was rejected - I would have called for reverse hijacking. The complainant made no research to see if the respondent had any legit claims to the name - they just jumped ahead and filed a WIPO.

Calling for RDNH in a UDRP case is stupid and ego masturbation by the lawyer.

Why?

UDRP has no right to a reply brief. However, MANY panelists allow a reply if the complainant is accused of RDNH.

But, if you get an RDNH ruling, what do you actually win? NOTHING.

It feels good to get one. You get bragging rights. But you win absolutely nothing, yet you open the door to a supplemental filing being accepted.

 

[dvdrip]

Are you confusing UDRP with WIPO?
NAF accepts additional submissions.

And one can file an additional submission at WIPO anyway. With or without RDNH. It's up to the panelist to accept it or not.

UDRP has no right to a reply brief. However, MANY panelists allow a reply if the complainant is accused of RDNH.
QUOTE]

 

[draggar]

Calling RDNH can get the complainant flagged as a reverse hijacker. We all know that while there are people who buy domains with malicious intentions (which is why WIPO / UDRP was created) there are plenty of people who try to abuse those policies for their own benefit. Its a fact of life - out there there is someone trying to abuse any policy for their own benefit.

I'd say any case where a company feels that they have more rights over an individual's name than the individual then it is an abuse of that policy (as long as the person is not infringing on the company's trademark).

Bob McDonalds has just as much right to McDonalds.com as the fast food chain as long as he doesn't pretend to be them or infringe on their trademark (selling hamburgers - but really, can they go against him for that if they are his hamburgers?). It comes down to who got it first and if the other is willing to pay the price.

Now, I do not think everyone has the right to file a WIPO against a company who owns their name.com. If a company was able to obtain the domain though legal means (hand registration, purchase, or legitimate WIPO) then they do have the right to it (my last name.com would easily sell in the mid $xxx,xxx range if not more - but I am not filing a WIPO against the owner).

 

[marcorandazza]

Are you confusing UDRP with WIPO?
NAF accepts additional submissions.

And one can file an additional submission at WIPO anyway. With or without RDNH. It's up to the panelist to accept it or not.

No, I'm not.

NAF might "accept" supplemental filings for a $400 fee, but under the UDRP, the panel has no obligation to accept them. In fact, some panelists make sure to remind the reader of that in any decision where supp filings were submitted. Just because the complainant paid $400, the panel is not obliged to consider it.

Similarly, other providers may not charge for supplemental filings, but whether or not to actually review them is within the discretion of the panel.

The panel is, however, presented with a more compelling argument for consideration, and more frequently *does* consider supp filings when there is an RDNH accusation.

Making an RDNH claim is nothing more than stupid pecker-waving that doesn't actually serve the Respondent's needs.

Calling RDNH can get the complainant flagged as a reverse hijacker. We all know that while there are people who buy domains with malicious intentions (which is why WIPO / UDRP was created) there are plenty of people who try to abuse those policies for their own benefit. Its a fact of life - out there there is someone trying to abuse any policy for their own benefit.

Precisely. And that plus $4 will get you a mocha latte.

You may as well call the complainant a "douchebag." It is meaningless. If RDNH had some teeth, any teeth at all, it would be worthwhile. However, any time I see a Respondent bothering with an RDNH claim, it is either an uneducated self-represented respondent who "learned" domain name law by reading this (or worse) boards, or a domain lawyer who is more interested in his own ability to market himself by waving the "look, I won an RDNH claim" flag around than he/she is concerned with actually serving the client.

It is dumb. It may feel good, but until the UDRP is amended to provide some benefit to winning an RDNH, it is plain stupid, and potentially malpractice, to even seek a finding of RDNH. If RDNH exists, the panel can find it without being asked -- and occasionally they do.

 

[draggar]

You may as well call the complainant a "douchebag." It is meaningless. If RDNH had some teeth, any teeth at all, it would be worthwhile. However, any time I see a Respondent bothering with an RDNH claim, it is either an uneducated self-represented respondent who "learned" domain name law by reading this (or worse) boards, or a domain lawyer who is more interested in his own ability to market himself by waving the "look, I won an RDNH claim" flag around than he/she is concerned with actually serving the client.

It is dumb. It may feel good, but until the UDRP is amended to provide some benefit to winning an RDNH, it is plain stupid, and potentially malpractice, to even seek a finding of RDNH. If RDNH exists, the panel can find it without being asked -- and occasionally they do.

The process seems a bit hypocritical then. If someone loses several WIPO cases then they are labeled as a cybersquatter and it seems that the panelists my look at them in a negative way (thus throwing out the whole "impartial" belief out the window) yet if someone has several RDNH rulings against them then no one cares.

 

[marcorandazza]

I think that is a fair critique of the UDRP.

Nominet's procedures for .UK disputes is much better:

the Nominet rules provide:

Reverse Domain Name Hijacking in which a party has attempted to use the Policy and Procedure citing an Abusive Registration to gain a Domain Name that is held legitimately by an innocent party. Three failed attempts at claiming a Domain Name with Nominet results in a ban on any further claims for a 2-year period on any Domain Name with Nominet.

Something like that really needs to be inserted into the UDRP.

 

[draggar]

That would only be a slap on the wrist to most people who abuse the processes (but it would be better than nothing).

 

[jberryhill]

if it is your last name they can never never take your domain away in UDRP.

If your last name is DuPont, you cannot run your own DuPont chemical company, no.

I cannot open a Berryhill taco restaurant, because there is a federal trademark for tacos in "BERRYHILL" belonging to a company called Berryhill Baja Grill. I could also not open a catering and restaurant business in Idaho, because the pre-eminent Boise chef named John Berryhill has that locked up.

The right to use your own name in commerce is by no means absolute.

I would have called for reverse hijacking

Ummmm... it was an RDNH decision.

You do know that Uzi Nissan was using the domain name for foreign car repairs before he became a "computer retailer", yes?

Have you ever considered buying a computer from his site? Try it.

 

[dvdrip]

How do you lose a UDRP with element 3 if you already have won with element 2?
What you describe is not something that UDRP should decide.
These are court cases.

If your last name is DuPont, you cannot run your own DuPont chemical company, no.

I cannot open a Berryhill taco restaurant, because there is a federal trademark for tacos in "BERRYHILL" belonging to a company called Berryhill Baja Grill. I could also not open a catering and restaurant business in Idaho, because the pre-eminent Boise chef named John Berryhill has that locked up.

The right to use your own name in commerce is by no means absolute.

What a nice lawyer forum we have here. A lawyer calls other lawyers dumb and stupid and they did not even give a single response. Great.
I am getting goosebumps.

It is dumb. It may feel good, but until the UDRP is amended to provide some benefit to winning an RDNH, it is plain stupid, and potentially malpractice, to even seek a finding of RDNH. If RDNH exists, the panel can find it without being asked -- and occasionally they do.

 

[jberryhill]

It may feel good, but until the UDRP is amended to provide some benefit to winning an RDNH, it is plain stupid, and potentially malpractice, to even seek a finding of RDNH.

I disagree.

In post-UDRP correspondence with the other side, I have used RDNH holdings as evidence of abuse of process, tortious interference and the action provided in 15 USC 1114(2)(d)(iv)-(v), and have settled these claims in exchange for payment, while keeping the domain name.

RDNH has no inherent value in the UDRP, but has evidentiary value elsewhere.

I strongly agree that it need not be requested by the Respondent. I may lay out the arguments for it, and I've characterized the proceeding as such in a few cases, but the panel is independently obligated to consider it.

A lawyer calls other lawyers dumb and stupid and they did not even give a single response.

Everyone is entitled to their opinion, and compulsively responding to threads on domain forums is not the highest priority of any attorney.

How do you lose a UDRP with element 3 if you already have won with element 2?
What you describe is not something that UDRP should decide.

How do you lose? Easy. The Panel decides against you. That's how.

There are many panelists who believe it is more important to reach what they believe is a "right result", and do not treat the UDRP very literally.

 

[Dave Zan]

In post-UDRP correspondence with the other side, I have used RDNH holdings as evidence of abuse of process, tortious interference and the action provided in 15 USC 1114(2)(d)(iv)-(v), and have settled these claims in exchange for payment, while keeping the domain name.

Count on the Berryhill man to find a way.

(Hey, Marc, something new to consider your approach to this?)

 

[dvdrip]

Well if they want me to lose anyway, they don't even have to read the complaint and the response...
I am talking about a "fair" panelist.

How do you lose? Easy. The Panel decides against you. That's how.

There are many panelists who believe it is more important to reach what they believe is a "right result", and do not treat the UDRP very literally.

It is not a highest priority for any person. Really.
But when he calls most domainers morons and stupid, when he calls most lawyers(including you) idiots and dumb, when he calls 2 of the most sought after "Respondent" panelists "both are absolute disgraces to the UDRP process.", then someone has to reply.

Everyone is entitled to their opinion, and compulsively responding to threads on domain forums is not the highest priority of any attorney.

 

[jberryhill]

But when he calls most domainers morons and stupid, when he calls most lawyers(including you) idiots and dumb, when he calls 2 of the most sought after "Respondent" panelists "both are absolute disgraces to the UDRP process.", then someone has to reply.

Don't take things so personally.

Really, getting all fired up about whether a panel issues an RDNH ruling, or whether a respondent should expressly request it, is just not that big a deal.

I am talking about a "fair" panelist.

I'm talking about a fair panelist too. The overarching issue is "legitimate rights". Being "commonly known by" is one defense.

But let's say that I register Berryhill.tld, and use the domain name for nothing relating to me, but to advertise my friend's taco restaurant - Jim's Awful Infringing Tacos. Jim competes directly with http://www.berryhillbajagrill.com/

I could see a "fair minded" panelist taking the position that I am not commonly known as "Berryhill", but I am commonly known as "John Berryhill", "John", and a number of other things not fit for publication; and then further deciding that the infringing use is not "legitimate".

This may come as a shock, but even fairminded people can disagree on the consequences of the same facts. Here the "unfair" panelist is reaching for a result which he believes is "fair" in a broader sense, and is narrowly interpreting the rule.