"nhn.com" decision

[Ovicide]

This URL for this decision was in the March 8 Domain Decisions mailing from "wipo.int".

It's in favor of the complaiant; It's circumstances are rather unusual, and I believe others here will find it interesting too:
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0939.html

 

[QuantumBeam]

well.......... :-O

 

[Garry Anderson]

You know my view.

The owner of nhn.com could have LEGALLY started his own company with it or LEGALLY sold it to another person for this purpose.

To me it is clearly trademark overreach by NHN Corporation - as usual aided and abetted by WIPO panelist Judges.

It is my informed opinion that panelist's Tony Willoughby, Sang Jo Jong and Sally M. Abel are corrupt.

 

[jberryhill]

"The owner of nhn.com could have LEGALLY started his own company with it or LEGALLY sold it to another person for this purpose."

But he didn't. What he did instead was to construct a bogus "cover story" using a straw party transaction after he got wind of the trademark claim. The panel bent over backwards to brequested documentation of the Respondent's stated plans to use the domain in connection with a "National Health Network" as stated in the original response. The Respondent declined to provide evidence to support that story, leading to the inference that someone was pulling someone else's leg.

 

[Garry Anderson]

John> "after he got wind of the trademark claim".

So - after the fact then?

Exactly how does that preclude the fact he "could have LEGALLY started his own company with it or LEGALLY sold it to another person for this purpose"?

I doubt you will be able to answer.

Was this or was this not - clearly trying to prevent NHN Corporation from taking the domain in the corrupt UDRP - to prevent NHN Corporation overreaching mark?

Even beforehand - trying to bump up the price, saying others are interested is not illegal.

 

[Garry Anderson]

P.S. You and Howard did not answer - so I presume you both agree about JT.com:

A) It is overreach for a trademark to prevent others from using these initials lawfully.

B) The panelist Judge SHOULD KNOW that it is overreach for a trademark to prevent others from using these initials lawfully.

;-)

 

[Nameable]

"cyber flight" eh? Can anyone point to documentation of the NJ courts overturning arbitration decisions like this?

I presume they incorporated in NJ instead of NY as a form of venue shopping...

 

[Deleted member 4749]

This case is absurd and a miserable failure, to say at least.

 

[namedropper]

If nothing else, domain name owners can use this case to find examples of what NOT to do when trying to sell a name:

1) Claim to have had an offer of $250,000 that you turned down and then in the next round of haggling say that you can see if you'll talk the partner into selling for $150,000. Hello, if he really had an offer for $250,000 he wouldn't be willing to sell $100,000 less. At this point he branded himself a liar, and a bad one at that.

2) Upon hearing that the name could be brought to dispute, suddenly and mysteriously transfer ownership of the name to a friend. Not only does this look suspicious, but the panelists of an upcoming UDRP hearing can look at the date of transfer as the new registration date. Owner #1 might try to claim that it's not bad faith because he never heard of NHN (implausible considering where he was and his other names owned, but arguable), but it's damn unlikely that owner #2 never heard of the same NHN that threatened his friend Owner #1 before he gained ownership. Acting in such a way pretty much hands over a reasonable conclusion of bad faith on a silver platter.

3) After claiming to have sold the name to someone else, continue to take offers on the name. More lying. Bad faith again. He should have told the new person to contact Owner #2 if the sale was legit (or he wanted to act like it was legit).

4) When asked to provide proof that you were actively developing a name, ignore it. I mean, come on, if he had been he could have proven it somehow. Even if he hadn't he could have come up with something. This implies that he doesn't really have a legit use. When the court asks you to walk the walk, at least make an effort to crawl, don't just sit there.

From my reading of the case, it sounds likely that they did get this specific acronym for the sole purpose of having the same name as a major portal in their country. So while it is possible to have another use for NHN.com, they didn't show anything and instead acted totally suspicious and underhanded. If they had just not transfered the ownership of the name and/or provided some sort of documentation they probably could have successfully navigated through this.

Would I have ruled against them if I were a panelist? Probably not, as the intials have inherent legitimate uses up the wazoo. But then I don't exactly blame the panelists for their ruling after all the shenanigans. If someone's acting like a crook it's all too easy to treat them as a crook.

 

[jberryhill]

Dan, as usual, has nailed down what there is to take away from this decision.

The only caveat I would add is:

"From my reading of the case, it sounds likely ..."

Since the full record is not available, it is not always the case that a UDRP opinion accurately reflects the record. Having reached, for whatever reason, a decision to transfer the name, then the recitation of facts can make the opinion self-justifying.

In this particular instance, there may have been some gaps in the correspondence, or other facts before the panel which didn't make it into the opinion, and which would give this case a somewhat different aroma. But when the BS detector goes off, for whatever reason, things will start to tilt one way or the other on whatever that party alleges.

That is an important principle to keep in mind on the defense side. Facts are never as clean and clear as you might like them to be in any dispute - and that is true for both sides. Many, many complainants are inclined to "gild the lily" in order to make their case more compelling.

So, if a complaint says the sky is blue, it is advisable to go outside and check, and then make sure to point out any untrue statement of fact in the Complaint. As many people know from jury instructions, if a witness tells just one lie, then you are entitled to disregard everything else that witness has to say.

On the defense side, I sometimes see people who have done absolutely nothing wrong behave in suspicious ways to try to "make it look good." While understandable, that kind of reaction can be a counterproductive one.

 

[armstrong]

So what then is the appropriate reaction when someone emails us asking about any of our 2 or 3-letter domains that are undeveloped? Should we stop displaying 'this domain is for sale' adverts?

 

[Garry Anderson]

Dan, as usual, has given his true honest opinion.

"Would I have ruled against them if I were a panelist? Probably not, as the intials have inherent legitimate uses up the wazoo."

This is the absolute crux of the matter - hear the hitting of nail on head.

The guy may be a liar and have many shortcomings - but he did not do ANYTHING ILLEGAL.

The Complainant KNEW that "the intials have inherent legitimate uses up the wazoo" and even offered $50,000 for the Domain Name.

That did not work - so they tried corrupt UN WIPO's UDRP.

How about that for a "modus operandi"?

Fact: It was a clear case of trademark overreach.

I would have thought most lawyers would believe the same way.

 

[Ovicide]

Well, "nhn.com" still points to the National Health Network Corp.

Does this mean that the respondents are pursuing:
http://www.icann.org/udrp/udrp-policy-24oct99.htm#4k

Which says:

k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution...

 

[jberryhill]

It probably means the complainant's lawyers haven't figured out how to deal with the two-bit registrar.

 

[dax]

There are few UDRP cases i saw which are falsely ruled recently (i think one was kudos.com - panelist ignoring "TM registration must predate domain registration" - Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001)) , but in those cases there was only 1 panel member. Personally, i thought 3 member panel cannot make false rule, and in this case i think that they ruled quite unsatisfactory...

My opinion is based on:

Domain names incorporating arbitrary 3-letter combinations, even those containing common dictionary words, may be registered in good faith and, per se, establish the Respondent’s legitimate interest. Tenenhaus v. Telepathy Inc., NAF Case No. 94355 (complainant not entitled to exclusive use of 3-letter combination DAF); Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 ("use of short terms …even for sale, is a legitimate business."); Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (registration of 2 and 3-letter domain names found to be legitimate.)

 

[dax]

UnBeatable argument isn't it?
At least, i thought somebody would have something to say about it :'(

 

[options]

I completely agree dax.
As I said several times, anything less than four, even five characters must not be subject to TM issues. Something like that must be implemented in real world.
Secondly, a (short) company's acronym should not be automatically TM-ed and equally treated as the full company name.

 

[namedropper]

I completely agree dax.
As I said several times, anything less than four, even five characters must not be subject to TM issues. Something like that must be implemented in real world.
Secondly, a (short) company's acronym should not be automatically TM-ed and equally treated as the full company name.

That doesn't make sense.

Being an acronym or not isn't even an issue, it's how it was being used.

If someone bought IBM.com before IBM, not necessarily a big deal. But if they tried to sell computers on it, lookout. Someone could use KFC.com for any number of things, but if they tried selling chicken on it, it's a definite TM violation.

What all too many people fail to differentiate is that it's not just mere ownership of a name that's bad, it's the intent, the field, etc. That's what makes something a TM violation or not. Simply saying that 4 character domains can't be TM issues is hopelessly misunderstanding the situation.

 

[options]

That doesn't make sense.

Being an acronym or not isn't even an issue, it's how it was being used.

It is indeed not, but should be an issue.

If someone bought IBM.com before IBM, not necessarily a big deal. But if they tried to sell computers on it, lookout. Someone could use KFC.com for any number of things, but if they tried selling chicken on it, it's a definite TM violation.

It probably is, but definitely shouldn't be.
International Business Machines or Kentucky Fried Chicken cannot have a TM on their short acronyms, regardless of recognition involved here.

That's what makes something a TM violation or not. Simply saying that 4 character domains can't be TM issues is hopelessly misunderstanding the situation.

I am not talking about the law here, I am trying to emphasize common logic.
Unfortunately, the only thing that can defeat a justice is a law.

I wouldn't even mention a lawyer.

 

[namedropper]

International Business Machines or Kentucky Fried Chicken cannot have a TM on their short acronyms, regardless of recognition involved here.

I am not talking about the law here, I am trying to emphasize common logic.

What you are proposing isn't logical at all. Unfortunately, logic tends not to be common, so most people referring to "common sense" or "logic" are just basically saying "I'm right because I say so" and can't back it up with any good reasons.