Simply put, not all domains are good candidates for a UDRP complaint. It is the duty of a Complainant and its counsel to both carefully research claims before filing and also to be prepared to alter their strategy if new facts come to light after filing. If these fundamentals are ignored and a Complainant is unable to provide the right evidence, it risks more than just a denial of its claim. Completely unsubstantiated complaints could be judged as an attempt at reverse domain name hijacking, a ruling that could be used against the Complainant in subsequent cases.

The perils of filing a complaint without sufficient evidence were highlighted in a recent UDRP decision handed down by a World Intellectual Property Organization (WIPO) Panelist. In this case, the Complainant, the California Milk Processor Board (the organization behind the Got Milk? advertising campaign) was denied its Complaint against Center Ring Productions, LLC over the domain name GotMilke.com.

Respondent’s owner, a Mr. John Milke, registered the domain in 2010 and argued that it had been chosen purely for its resemblance to his own surname. He also asserted that any similarity to the famous Got Milk? campaign was entirely coincidental. Further, the Respondent stated that the domain had been used exclusively for personal emails and not for commercial gain.

The Complainant introduced no evidence to show that the Respondent was not commonly known by the name Milke and, likewise, was unable to show that the Respondent's choice of the GotMilke.com domain was an attempt to profit from the Got Milk? mark. It seems that the Complainant found it unbelievable that GotMilke.com could have been registered without a desire to profit from the famous ad campaign. Yet this, in and of itself, does not constitute proof and the UDRP Panelist remained unconvinced.

It is surprising, in this case, that the Complainant’s counsel either didn’t adequately research the Respondent or, upon learning the surname of the Respondent's owner, didn't move to suspend the case and initiate settlement negotiations. Once the Respondent's connection to GotMilke.com was discovered, the Complainant would have been better off avoiding the UDRP route altogether and directly negotiating an acquisition of the GotMilke.com domain, or waiting to file the Complaint until able to make its case. Instead, the case was lost and the Complainant narrowly avoided a finding of reverse domain name hijacking.

“Bad faith” can some times be the trickiest element to prove when trying to demonstrate that a registrant has cybersquatted a domain name. Many times, whether a domain owner has acted in bad faith comes down to timing, specifically when he or she first registered the domain name. This principle was called into question during a recent cybersquatting lawsuit in a Los Angeles federal court.

Erik Bethke, the founder of the virtual pet game and social network GoPets Ltd., had attempted to purchase the domain name GoPets.com from its owner, Edward Hise. Bethke initially offered Hise $750 for the domain, but when Hise rejected the offer, Bethke filed a UDRP arbitration with the World Intellectual Property Organization (WIPO). Unfortunately for Bethke, because Hise had registered GoPets.com five years before Bethke created GoPets Ltd., the complaint lacked evidence of bad faith and the WIPO Panel denied Bethke’s request to transfer the domain.

After the failed UDRP, Bethke again offered to purchase the domain, this time for $40,000. Hise responded asking for $5 million and threatening to add metatags to the code of GoPets.com in order to redirect visitors to Bethke’s site back to Hise’s domain. After sending that demand, Hise transferred ownership of the GoPets.com domain to Digital Overture, the company that he co-owns with his brother. Through Digital Overture, the Hise brothers have registered over 1,000 domain names.

After Hise transferred the domain, Bethke took legal action, suing him in a Los Angeles federal court for cybersquatting and trademark infringement. He attempted to circumvent the issue of when the domain had originally been registered by arguing that Hise’s renewing the domain name registration and then transferring it to Digital Overture amounted to a new registration. The Los Angeles judge sided with Bethke, awarding him $100,000 in damages as well as the domain name GoPets.com.

However, a three-judge panel of the 9th Circuit judges partially reversed this ruling, on the grounds that the Anitcybersquatting Consumer Protection Act (ACPA) is very clear about its definition of “registration” as referring to the initial domain name registration. In the decision, Judge William Fletcher wrote, “We see no basis in ACPA to conclude that a right that belongs to an initial registrant of a currently registered domain name is lost when that name is transferred to another owner.”

The judges did agree that both Hise and his brother had shown bad faith after the UDRP proceedings, and had also violated unfair competition laws during their negotiations with Bethke. The Los Angeles judge is now left to decide what relief might be appropriate for these offenses. Whether this decision will have any impact on the way domain transfers are regarded under UDRP precedent has yet to be seen.

Aside from highlighting how complex domain name-related matters can be, this case opens up the question of whether or not ACPA needs to be adjusted to more adequately cover scenarios of domain name transfers, as well as other issues.

Anyone who has ever busted a gut laughing at Animal House or any of the Vacation movies owes a big guffawed thanks to the Harvard Lampoon, an undergraduate humor publication founded in 1876 at Harvard University that inspired the creation of National Lampoon. The bastion of wit that is the Harvard Lampoon credits itself with inventing the word “pizzazz,” and is also the source of one of my dad’s favorite groan-inducing jokes of all time: “Did you get a hair cut?” “No, I got all of them cut” (my dad, of course, being almost as old as the magazine itself).

Unfortunately, anyone familiar with domain name dispute resolution procedures (as in, all of us here at FairWinds) knows how tough it can be to assert rights to a generic term domain name. Despite being the longest-running humor magazine in history, and despite being from Harvard, the Harvard Lampoon was unsuccessful in its attempt to claim the domain name Lampoon.com from the Florida-based Reflex Publishing via UDRP. The three-person World Intellectual Property Organization panel did not find that there was sufficient evidence to show that Reflex Publishing had registered the domain with the intention of profiting from and exploiting the Harvard Lampoon’s rights to the “Lampoon” mark.

It’s worth noting, of course, that the longest-running humor magazine in history didn’t quite get around to actually registering that mark until 2000, two years after Reflex Publishing had registered the domain name. (Fun fact: the Harvard Lampoon actually uses the term “Harvard” under a license with the university.) Additionally, all the exhibits that the Harvard Lampoon provided to demonstrate its longstanding common law trademark rights to the “Lampoon” mark – magazine covers, book covers and the like – all displayed the phrase “The Harvard Lampoon,” not “The Lampoon.”

Of course, there is always the chance that this filing was actually just a parody of a real UDRP complaint.

I am a huge fan of the NBC show “The Biggest Loser.” I find the contestants’ weight loss stories inspirational and I even follow this season’s winner Olivia and her sister Hannah, this season’s runner-up, on Twitter. I’m not even ashamed to admit that. What’s up, @BL11Olivia and @BL11Hanna!
 
So needless to say, I was quite excited to see that Reveille LLC, the movie and television studio that produces “The Biggest Loser,” reclaimed the domain name TheBiggestLoser.com via UDRP arbitration from its previous owner. The domain was being used to host a variety of information about diet and weight loss, some of which was affiliated with The Biggest Loser brand.
 
Reveille owns other similar domains, including BiggestLoser.com, TheBiggestLoserClub.com and TheBiggestLoserStore.com. Now, the company can add another key domain to its portfolio.