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Hold On! – Since when is parking a generic domain bad faith?

2014 May 8
by Nat

In the recent decision, sole panelist Christopher Pibus found the domain owner guilty of bad faith for simply placing the domain on a parking page. Pibus made the bad faith finding despite there being no evidence that any of the ads on the parked page were infringing.  When I visited the page at, the ads were related to cars (screenshot below).  Swedish company Amicus Trade AB, the Complainant, has a trademark on ‘holdon’ for clips.

Pibus found bad faith because that the seventeen year-old domain was interfering with the Complainant’s business-

The Panel is further prepared to accept the Complainant’s uncontested assertions that the use of the disputed domain name in association with a click-through site has interfered and/or is interfering with the Complainant’s business, and that the disputed domain name is leading Internet customers seeking the Complainant’s website to the Respondent’s unauthorized website for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent.

I fail to see how using, in a non-infringing way, a generic domain that long predates the existence of the Complainant is interfering with the Complainant’s business.  If merely using the is interfering with Amicus Trade’s business, then the domain began interfering with the Complainant’s business the moment that Amicus Trade starting making use of the ‘holdon’ brand fifteen years ago.  Yet as the domain predates the business, it makes no sense to accuse the domain of interfering with the business.  Why is the current use bad faith when the previous uses of the domain were not?   Are owners of generic domains not allowed to place ads on their websites that don’t infringe on any other trademarks?  Is it bad faith to try to make money from your website when you aren’t infringing on anyone else’s trademark rights?

The domain owner failed to file a response.  Even so, in order to succeed in a UDRP the Complainant must demonstrate that the registration and use is in bad faith.

Pibus’ position that placing non-infringing ads on a non-distinctive domain is bad faith use targeting the trademark holder is an overreach.  It expands the rights of trademark holders far beyond any legal foundation.  This approach also has the practical effect of putting every parked non-distinctive domain at risk, if the domain is at all similar to an existing trademark.

The decision, and other similar decisions such as the decision and the decision, pervert the intention of the UDRP.  In these cases the UDRP is not, as it is supposed to be, a procedure for protecting trademark holders from blatant cybersquatters.  Instead, in these cases the UDRP is a tool whose purpose is to steal from their owners valuable non-distinctive domains that are coveted by the trademark holders but to which the trademark holders have no legal right.



10 Responses leave one →
  1. May 9, 2014

    That decision seems crazy. It is one of the reasons I sold almost all of my parked domains over the past few years. There was too much risk they might get taken away from me, even though I hand registered them all in the 1990s and at the time none were trademark violations.

  2. Nat permalink*
    May 9, 2014

    Eric, Thanks for the comment. While the may not seem that noteworthy – a fairly obscure domain transferred to an exact match trademark holder – Pibus’ reasoning puts at risk hundreds of millions of dollars worth of non-distinctive (generic) domains and delegitimizes the entire domain parking industry.

    You are not alone in avoiding parking domains. Other domain investors I’ve spoken to, and I have as well, moved domains off of parked pages because of the risk.

    Misuse of the UDRP is a problem for the domain industry not only because it provides a cloak of legitimacy for stealing valuable generic domains, but also because it undercuts the ability of domain owners to generate ad revenue from type-in traffic to our domains.

  3. May 9, 2014

    Hold On a sec! Oops its a TM….

    • Nat permalink*
      May 9, 2014

      Xavier –

      Amicus Trade doesn’t have a US registered trademark. Nor does it claim a trademark in India, the apparent home of the domain registrant.

      There is no evidence offered in the decision that the domain owner was even aware of the Complainant, or that there was any reasonable prospect that domain owner should have known about the Complainant.

      There are other Trademark holders on the term “holdon”. For instance-

      Typed Drawing

      Word Mark HOLDON
      Goods and Services IC 003. US 001 004 006 050 051 052. G & S: Hair Styling Gel. FIRST USE: 19870208. FIRST USE IN COMMERCE: 19870208
      Mark Drawing Code (1) TYPED DRAWING
      Serial Number 76391696
      Filing Date April 4, 2002
      Current Basis 1A
      Original Filing Basis 1A
      Published for Opposition December 3, 2002
      Registration Number 2690559
      Registration Date February 25, 2003
      Attorney of Record Robert C. Freed
      Type of Mark TRADEMARK
      Register PRINCIPAL
      Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20130615.
      Renewal 1ST RENEWAL 20130615
      Live/Dead Indicator LIVE

      This raises the question as to why the Complainant is entitled to claim exclusive commercial rights to the ‘Holdon’ term.

      If Beautopia, the US trademark holder, had filed the UDRP instead of Swedish company Amicus Trade AB, would they have won?

      When multiple companies can claim trademark rights to the same non-distinctive term, then are the UDRP panelists encouraging a rush to be the first to file? If many companies have equal TM rights to a non-distinctive term, and the first to file is awarded the corresponding domain, then the UDRP ceases to be about bad faith cybersquatting but instead is a casino where the first to make a claim wins the domain as a prize.

  4. May 9, 2014

    Despite pretty much having followed Eric’s route away from potential problems, I still get some “You’re using our domain” e-mails from companies founded two years ago on domain names that were registered in the 1990s.
    Horrifying as this story is, the phrase “the Complainant’s *uncontested* assertions” suggests the owner didn’t even say “Hang on a minute….”
    As much as I disagree with many UDRP decisions, one has to at least put up a defence, surely?

    • Nat permalink*
      May 9, 2014


      The domain owner would certainly have been better served if he had filed a response.

      In the absence of a response, is the proper resolution for a Complainant’s unsupported allegations to be accepted as fact so that domains are transferred without evidence of actual bad faith against the Complainant? Complainants still need to prove their case. In the case, Panelist Pibus accepted allegations as evidence and ordered a transfer despite the Complaint not meeting the requirements for transfer as specified in the UDRP policy.

      Panelists have found Reverse Domain Name Hijacking against complainants even when the domain owner failed to response. The Complainant still needs to make out a case and provide evidence. In, Pibus accepted a parked page with non-infringing links as demonstrating bad faith use targeting the Complainant, when it demonstrates nothing of the sort.

      Accepting a “Guilty unless proven innocent” standard, which is what Pibus does in the case, encourages frivolous, abusive filings by trademark holders who will file baseless complaints simply in the hope that the domain owner doesn’t respond. If there is no response, then according to Pibus’ standard, allegations are accepted as fact and bad faith is invented out of thin air – and valuable domains are stolen from their owners.

      • May 9, 2014


        Perhaps I explained that badly and took my horror at the idea of reverse hijacking as a given and concentrated my response on a minor/moderate point (of lack of defence) – although it certainly wouldn’t have hurt.

        The lack of standard responses in the UDRP process is deeply disturbing and this is just another example of a lack of a consistent response.

  5. Mark permalink
    May 9, 2014

    When I began to hear about too many of these case last year, I had my parking company change all my parked pages to have no ads on them at all, just indicating the name is for sale only. Parking revenue was so insignificant compared to selling the name, it wasn’t a big decision to do this.

    So at least in some small way I feel more protected.

    • Nat permalink*
      May 9, 2014

      Yes, that sounds like the right decision. You aren’t the only one. Many domain investors that I talk to are pulling their domains often parked pages with ads because it is too risky.

      If I was a parking company, I would be making a big push to educate UDRP panelists that it is not inherently bad faith to place relevant ads on a domain name.

      • Mark permalink
        May 11, 2014

        It was like puling teeth to get Sedo to make a page that didn’t have ads. I had to threaten to leave them, and they finally did it. And I would have left, even though I’ve had really good results with them in selling names.

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