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After losing UDRP, domain owner files in Federal Court to prevent domain transfer

2013 December 10
by Nat

Last month panelist Eduardo Machado ordered the transfer of in one of the most poorly reasoned UDRP decisions ever issued.  Stephen Gilfus, the owner of the domain, has filed in Federal Court in Florida to prevent the transfer by seeking a declaration under the Anti-Cybersquatting Protection Act that his use of the domain is legal.  He is also seeking a declaration that Ovation Hair, the Complainant in the UDRP, is guilty of Reverse Domain Name Hijacking under the ACPA.

read more… reported sold to Chinese travel company Ctrip

2013 November 25
by Nat

Alex Lerman, a long-time investor in generic domain names, was until recently the registered owner of  Alex confirmed on a phone call that he no longer owned  the domain.

Alex does not wish to publicly disclose the sales price.  He is known for not offering his domains for sale, so it likely took a substantial offer to persuade him to part with it.

The new owner appears to be giant Chinese travel company Ctrip.  Ctrip’s Pinyin name is Xié chéng, thus its interest in

Ctrip is publicly traded on NASDAQ with a market capitalization of nearly 6 billion dollars.  Its market value has more than doubled in the past year.

This sale again demonstrates the tremendous impact that the Chinese have had on the domain market.  Domains that were out of favor, such as number domains and acronyms that include ‘x’, ‘q’, ‘j’, and ‘z’, are now in high demand thanks to interest from Chinese buyers.

Chinese buyers with an interest in two-letter dot-com domains have been good for Alex as last year he sold to another Chinese company for an amount that most speculation has in the millions of dollars.

Hat tip to the Chinese domainer who passed on the news

Updated 11/26

NAF Embarrassment with Sloppy and Inaccurate Cut-and-Paste decision in dispute

2013 November 25
by Nat

The sloppy cut-and-paste decision in the UDRP demonstrates once again the National Arbitration Forum’s (NAF) shoddy practices and some panelists’ lack of respect for the Reverse Domain Name Hijacking (RDNH) finding.  The decision also highlights the poor implementation and oversight of the UDRP policy, the policy that controls how a domain owner loses the rights to his or her domain name.

In the dispute, the Complainant tried to use the UDRP to steal the domain name, despite the fact that the domain was registered a decade prior to the Complainant’s trademark registration date and despite the domain owner’s 13 years of use of the domain in its descriptive sense.  The panelist rightly denied the complaint.

But why didn’t the panelist find Reverse Domain Name Hijacking?  This case seems like an obvious example of RDNH.  RDNH has been found in dozens of similar situations where the domain predated the trademark rights, where there was clear legitimate use and where there was no evidence of bad faith.  Why wasn’t RDNH found in this case?

read more…

Push to Adopt “Renewed in Bad Faith” Standard in UDRP puts Investment Domains at Risk

2013 November 7
by Nat

Many domains held for investment are at risk of loss due to a radical new approach to the UDRP championed by some UDRP panelists at WIPO’s Advanced Workshop on UDRP Practice and Precedent held in Geneva last week.

Respected WIPO Panelist and the Workshop co-leader, David Bernstein, is a leading advocate for this new approach that changes the criteria that the Complainant must prove to win a transfer of a disputed domain. The standard since the UDRP was introduced in 1999 has been that “Registration in Bad Faith” must be proven before a domain can be transferred. Bernstein, and other panelists who share his views, are using a “Renewed in Bad Faith” standard instead.

The “Renewed in Bad Faith” standard is an open invitation to covetous companies to employ the UDRP to try to steal your domains. As was made clear at the WIPO workshop, under the “renewed in bad faith” standard every renewal provides a panel the opportunity to look at the then current use for evidence of bad faith. Putting a domain to virtually any use other than running an established business on that domain can be viewed as bad faith. The following were all held out as examples of bad faith use at the workshop, and have been cited as bad faith use in many UDRP decisions-

read more…

NAF panelist orders transfer of, finds that ‘uniprotein’ is confusingly similar to a design mark on ‘universal’

2013 September 16
by Nat


A NAF panelist orders the transfer of after making a dubious finding that the domain ‘’ is confusingly similar to a design mark for ‘universal’ that incorporates an image of  a bodybuilder flexing his muscles.

Universal design mark

Universal Design Mark

Universal Nutrition sells body building supplies with a specialty in protein supplements.

‘Universal’ is of course a generic term with a wide range of commercial uses.  A search of the USPTO for live registrations for ‘universal’ produces over 1,000 results.

My understanding is that a design mark protects the design, not the related word.  If a company wants to protect a word, then they should apply for a word mark.

read more…

NAF Panelist enables theft of 11-year-old domain

2013 August 24
by Nat

In the decision, an NAF panelist permitted the Complainant to seize the domain even in the absence of any specific evidence that the domain was registered in bad faith.

The respondent didn’t help himself by failing to respond to the Complaint, but even relying on and accepting all the arguments presented in the Complaint, as they are outlined in the decision, there was no evidence of bad faith registration that could have justified transferring the domain.

read more…

150 RDNH cases highlight flaws with the UDRP; identified as the 150th RDNH

2013 August 23
by Nat

The UDRP complaint against has the dubious distinction of being the 150th case of Reverse Domain Name Hijacking identified so far.

Five thoughts on this milestone-

1.  The problem of RDNH is getting worse.  The UDRP is used more frequently than ever to attempt to steal domain names from their rightful owners.

The early years of the UDRP saw numerous RDNH findings as there was little precedent to go by and many people were unclear about the limitations of the UDRP.  Then came five years of single digit RDNH findings between 2003 and 2007.  From 2008 on there were double digit RDNH cases each year and 2013 is on track to set the all-time record.

After 12 years of the UDRP we would hope that it is now clear that the UDRP should only for clear cut cases of cybersquatting.  We might be surprised that RDNH cases are on the increase.  The explanation may be that activist panelists keep meddling with the UDRP criteria in an effort to make it easier for Complainants to seize domains through the UDRP.  This encourages Complainants to file frivolous cases by appealing to the misguided logic of the rogue panelists.  We’re now seeing a surge in UDRP complaints filed even though the challenged domains were registered well before the Complainant had any trademark rights to a similar term based on a theory held by some panelists that the UDRP no longer requires that a domain must be registered in bad faith in order for a panelist to order the transfer of the domain.

The number of RDNH cases by year shows the trend:

read more…

UDRP Panelists – Stop Hiding and Stand Up for your Beliefs

2013 August 9
by Nat

It can be frustrating reading UDRP decisions where there is a difference of opinion among the panelists if one wants to know what each of the panelists believes.  The decisions often refuse to name names.  The decision will say that a majority held one view, and that a minority held a different view.  But the decision won’t say which panelists held which views.

Why does this matter?  Because when a respondent or complainant selects its candidates for a three-member panel it is important to know each panelist’s views on the issues that are raised in the instant UDRP.   When UDRP decisions fail to name names, readers of the decision know that there was a difference of opinion but they don’t know which panelists held which position.  This deprives the reader of valuable information.  The UDRP empowers each party to select candidates for a three-member panel so why do panelists in writing their decisions make it harder to fulfill that function by making the views of its members anonymous.

Is it to create the illusion that the UDRP is more uniform than it is?  Do the panelists wish to pretend that their differences are minor and only limited to that particular case, so that it doesn’t matter for any future cases which panelist held which view?  Unfortunately the reality is that the UDRP is anything but uniform and the outcome of many cases depends entirely on which panelists are selected for the panel.  That is why having as much clarity as possible as to the panelists’ views is important.

In the recently decided UDRP on, which should have been a slam-dunk Reverse Domain Name Hijacking decision as the Complainant knowingly filed the UDRP despite being well aware that the domain was registered years before the Complainant was formed,  the decision notes that “a minority of the Panel is of the view that reverse domain name hijacking should not be found without evidence of some knowing effort to seize someone else’s intellectual property.”

Who is the panelist who held this view?  Apparently it is a secret.  But it would be very important for a respondent in a future case when tasked with selecting panelists for a case with similar facts to know which of the panelists in the case would not have found RDNH.

In the UDRP on the Marchex domain (that resulted in a finding of RDNH), two of the panelists held that Marchex did not have a legitimate interest in the domain.  Yet one of the panelists held that Marchex did have a legitimate interest in

A minority of the Panel does not agree with the Panel majority’s finding on the Respondent’s “Rights or Legitimate Interests”… The Respondent has been making bona fide commercial use of the disputed domain name for 8 years or more and … in the view of the minority Panelist a legitimate owner of a domain name, which has been making continuous bona fide commercial use of the domain name over such an extensive period has a legitimate interest in respect of it.

This difference in views is critical to any investor in generic domains.  I would like to know which of the three panelists found that Marchex had a legitimate interest in, as I would be inclined to select that panelist for any future disputes with similar facts.  But once again, we are left to guess because the identity of the mystery minority panelist is not revealed.

In, “A minority of the Panel believes that, in the context of this proceeding, Respondent placed Complainant’s trademark rights (at least in the U.S.) in sufficient dispute. ”  Unfortunately once again the decision does not disclose which one of the panelists held this belief.

This habit of refusing to identity which panelists hold particular views is found in case after case.  Hiding behind a cloak of anonymity is bad jurisprudence and adds to the unpredictability of the UDRP process.

Selecting a panelist shouldn’t be a game of three-card monte.  The decisions should offer transparency when there are differing views as to which panelists hold which views.

So to the panelists who are writing these decisions – stop being coy and start naming names.


The John Berryhill UDRP University

2013 June 21
by Nat

Domain attorney John Berryhill thinks strategically.  When a completely frivolous, seven-sentence complaint was filed on Frank Schilling’s domain, Berryhill saw an opportunity.  He used his response to provide a lesson to the panelists on the negative consequences of unilaterally making changes to the  UDRP.

Berryhill wanted to enroll one particular student – Andrew Christie.  Christie is notorious for his attempts to rewrite the UDRP.  He has ordered the transfer of domains that were registered well before the Complainant had any trademark rights – in other words, in circumstances where it was impossible that the domain was registered in bad faith.

The UDRP requires that three conditions be met before a panel can order the transfer of a domain name away from the domain registrant.  One of those conditions is that the domain owner must be found to have registered AND used the domain in bad faith to target the trademark holder that brought the complaint.  But Christie differs from nearly all of his fellow panelists in reading the UDRP to say that it doesn’t require that the domain be registered in bad faith as a condition for transfer, but rather that bad faith registration is simply one of many possible indications of bad faith.  Under Christie’s interpretation of the UDRP, a domain owner can register a domain name before the Complainant company even existed and then later lose the domain based on how the domain was used.

Christie would usually be the last panelist that an attorney representing a domain owner would select as his or her choice for a three-member panel.  Christie has issued many decisions to transfer domains away from domain owners in circumstances that strike me as being clearly cases where there was no evidence at all of bad faith.

Christie awarded the domain domain to the City of Paris despite acknowledging that the domain was likely registered in good faith and despite uncontested evidence that the domain had been legitimately used to distribute custom software.  Christie also attempted to transfer the domain but was overruled by the other panelists on the three member panel.  Andrew Allemann of awarded Christie a 2009 Domain Dunce Award for Christie’s habit of citing his own decisions as if they were independent support for his radical reinterpretation of the UDRP.

Berryhill pulled no punches in saying what he thought of Christie – and in particular Christie’s knowledge of Latin – in a comment on Allemann’s blog post-

So, on top of being a liar, Mr. Christie is also illiterate.

Yet fast forward three and a half years later, and Berryhill is picking Christie to be his #1 preferred panelist to decide the fate of a domain name owned by his most important client, Frank Schilling’s Name Administration.  A negative decision would brand NameAdministration as a repeat cybersquatter and could open up its portfolio of hundreds of thousands of domains to an onslaught of similar complaints.

Has Berryhill gone crazy?  No, Berryhill is crazy smart.

Berryhill wants Christie to face the consequences of his meddling with the UDRP.  Like the sorcerer’s apprentice, Christie is meddling with powerful forces and risks bringing on a disaster.  Berryhill holds Christie’s attempts to weaken the protections afforded domain owners under the UDRP partially responsible for an upsurge in frivolous complaints .  Many of these complaints are filed by complainants whose trademark rights post-date the registration of the disputed domain by several years.  These complaints should never have been filed, and they place an unreasonable burden on the domain owner as the domain owner is forced to spend time, money and effort responding to these frivolous complaints.  Yet Christie’s willingness to order domain transfers even in cases where it is impossible that the disputed domain was registered in bad faith gives hope to these Complainants and encourages them to take a ticket in the UDRP lottery in the hopes of winning a domain that they aren’t legally entitled to.

So Berryhill is enrolling Christie in his class on the UDRP by picking him to hear these “utter piece of crap” cases.  It is not often that one can force a panelist to face the consequences of his misguided reasoning, and Berryhill is taking full advantage of the opportunity.

As Christie read Berryhill’s response, he would have come across the following footnote, written especially for him:

 A complete database of all RDNH findings under the UDRP has been assembled at The listings are sortable by date, and the Panel is invited to verify this temporal trend, owing in part to a free-for-all atmosphere engendered by relatively recent, and minority held, “re-interpretation” of the UDRP by wellintended, capable and thoughtful panelists, whose carefully-crafted limitations of such re-interpretations are so much pearls before swine in the hands of UDRP complainants who have apparently gotten the idea that longstanding senior registration and bona fide use of a domain name is no bar to a cursorily-stated junior claim.  By opening the door a crack to certain “edge cases” these panelists have inadvertently opened a floodgate of meritless claims such as this one.

In language that is much more diplomatic than Berryhill’s comment above, Berryhill is making the point that trying to find clever ways around the clear wording of the UDRP can lead to frivolous complaints.  It’s a good lesson.  Perhaps Christie is learning it, as he, along with the other two panelists, determined that the complaint was an abuse of the UDRP and made a finding of Reverse Domain Name Hijacking.  It remains to be seen whether Christie will stop his one-man crusade to weaken the protections given to domain owners under the UDRP. reported sold

2013 May 30
by Nat

IP Pro reports that sold to a UK based financial services company.  The seller was a Brazilian search portal.

The article speculates that the price was the second highest ever paid for a two-letter dot-com, presumably below the $8.5 million reportedly paid by Facebook for