How to return the domain, which forgot to renew
The domain was not paid on time - it happens. However, domain domain is one thing, if not recently renewed and, by and large, worth exactly as much as paid to the registrar. And it is completely different, if it is long-standing, promoted and, especially, bringing income to your business. In this case, the domain, referred to in professional jargon as “dropped”, must be returned, otherwise, with due diligence, the new owner can not only destroy your business, but also use the fruits of your labors.
In attempts to return the domain, you can try various options, but, as a rule, it all comes down to contacting those who intercepted it and finding out the price. The presentation of claims to the registrar is unlikely to help: most likely, you will be informed that everything is done according to the law, the domain has been released and transferred to the new owner.
The forums usually say that when a new owner refuses to cooperate, there is no way out of this situation. In fact, it is, but this pleasure is not cheap. The cost of the fee that must be paid to return the unpaid domain is $ 1500-2000, not counting the cost of legal services. But if the domain really represents value, and the cost offered to those who intercepted it is lower than this amount, then, of course, it makes sense to resolve the matter without litigation.
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But what if the domain is vital, and the "invader" appetites are too large? In this case, the issue can be resolved in the WIPO (World Intellectual Property Property Organization) arbitration by filing a lawsuit to transfer the domain to you.
There are other bodies that deal with disputes under the UDRP (Uniform Domain Name Dispute Resolution Policy) procedure, but among them WIPO arbitration is the most authoritative and sought after. This is confirmed by his extensive practice, which it makes sense to analyze in order to assess his chances of success. For our part, we note that you can achieve a decision on the return of a domain if:
Having a registered trademark that is identical to a domain or confusingly similar to it is a serious claim for victory in a dispute. And here is an example of "by contradiction."
The owner of the Algiubagio snc bar (Venice, Italy) did not pay for the domain algiubagio.com, which was immediately intercepted by some enterprising leader from Poland. Asserting its rights to the intercepted domain, the plaintiff referred to the fact that:
As evidence, the claimant provided an extract from the Italian Trade Register.
However, as indicated by the WIPO arbitrator, this document is limited to the location of the claimant (Venice, Italy), and the defendant, located in Poland, should not have been aware of his rights to the disputed domain. On this basis, the claim was denied.
In this case, the arbitrator indicated that if the plaintiff had a registered trademark, the decision in the case could have been different (case No. D2005-0183).
But what to do if a trademark is not registered, as it often happens?
In this case, there is also an opportunity to prove your rights to the domain. WIPO Arbitration adheres to the concept of the so-called unregistered common law trademark. According to it, the owner of the domain can be recognized as the right to a trademark if, as a result of prolonged use, this domain has become widely known to Internet users and is associated with its administrator.
Prove these circumstances allow, in particular, high site traffic and duration of domain ownership. For this purpose, data from counters, publications in the press, including “paper”, demonstration of activity are used - for example, if links to the site from thematic, benign resources, etc., are posted on the site.
All this does not apply to domains in .ru and .rf zones, since the jurisdiction of the WIPO Arbitration does not apply to them, and there was no unregistered trademark in the Russian courts and there cannot be any.
There are two iron bases, when it definitely will not work:
Thus, considering the case against the foodandwinetravel.com domain, the arbitration refused to the plaintiff, who had a registered trademark, which included, among other things, a similar domain name in the .au zone.
For some reason, he did not pay for the domain on time and lost it. The defendant bought it from the registrar for $ 2500 and put it on the parking lot. The plaintiff sent a request, received an answer about the price of the transfer - $ 2500, and the correspondence was broken at that. The arbitration denied his complaint, stating that:
All this, in the opinion of arbitration, testified to the existence of rights and legitimate interests of the defendant.
The following circumstances most often testify to bad faith:
For example, the plaintiff, the owner of the OKI-NI trademark, registered in the EU, the USA and Japan, simultaneously owns many domain names that redirect visitors to the main website oki-ni.com. The defendant was able to intercept the okini.com domain that had been accidentally released. The arguments of the plaintiff were as follows:
The arbitration found it proved that the respondent, during the registration of the domain, allowed unfair behavior and decided to return the domain to the plaintiff (case No. D2011-1641).
It is also characteristic that the defendant did not participate in this dispute. Apparently, it was easier and more profitable for him to sell other domains.
By the way, unfair behavior during domain registration can be indicated by the amount that cybersquatter requests. So the plaintiff offered to buy the lost domain for $ 500 and received a counter offer - $ 5000. The arbitration agreed that the amount was many times higher than the cost of transferring the domain name, and the defendant registered and used the disputed domain name in bad faith (case # D2015-0226).
You can read more about the procedure for consideration of the case at the WIPO Arbitration in the previous article .
Return an unpaid domain. Issue price
In attempts to return the domain, you can try various options, but, as a rule, it all comes down to contacting those who intercepted it and finding out the price. The presentation of claims to the registrar is unlikely to help: most likely, you will be informed that everything is done according to the law, the domain has been released and transferred to the new owner.
The forums usually say that when a new owner refuses to cooperate, there is no way out of this situation. In fact, it is, but this pleasure is not cheap. The cost of the fee that must be paid to return the unpaid domain is $ 1500-2000, not counting the cost of legal services. But if the domain really represents value, and the cost offered to those who intercepted it is lower than this amount, then, of course, it makes sense to resolve the matter without litigation.
')
WIPO arbitration
But what if the domain is vital, and the "invader" appetites are too large? In this case, the issue can be resolved in the WIPO (World Intellectual Property Property Organization) arbitration by filing a lawsuit to transfer the domain to you.
There are other bodies that deal with disputes under the UDRP (Uniform Domain Name Dispute Resolution Policy) procedure, but among them WIPO arbitration is the most authoritative and sought after. This is confirmed by his extensive practice, which it makes sense to analyze in order to assess his chances of success. For our part, we note that you can achieve a decision on the return of a domain if:
- the claimant has a trademark identical or similar to the degree of confusion with the intercepted domain;
- the defendant has no rights and legitimate interests in relation to the domain;
- there is evidence that the defendant acted in bad faith during the registration.
- The absence of at least one condition is likely to lead to the rejection of the claim.
Registered trademark is half the success
Having a registered trademark that is identical to a domain or confusingly similar to it is a serious claim for victory in a dispute. And here is an example of "by contradiction."
The owner of the Algiubagio snc bar (Venice, Italy) did not pay for the domain algiubagio.com, which was immediately intercepted by some enterprising leader from Poland. Asserting its rights to the intercepted domain, the plaintiff referred to the fact that:
- is the owner of the eponymous bar domain in Venice;
- the defendant has no rights or legitimate interests in relation to the disputed domain name, since it does not own a similar trademark;
- The respondent acted in bad faith, using the domain to attract visitors to his adult site.
As evidence, the claimant provided an extract from the Italian Trade Register.
However, as indicated by the WIPO arbitrator, this document is limited to the location of the claimant (Venice, Italy), and the defendant, located in Poland, should not have been aware of his rights to the disputed domain. On this basis, the claim was denied.
In this case, the arbitrator indicated that if the plaintiff had a registered trademark, the decision in the case could have been different (case No. D2005-0183).
But what to do if a trademark is not registered, as it often happens?
In this case, there is also an opportunity to prove your rights to the domain. WIPO Arbitration adheres to the concept of the so-called unregistered common law trademark. According to it, the owner of the domain can be recognized as the right to a trademark if, as a result of prolonged use, this domain has become widely known to Internet users and is associated with its administrator.
Prove these circumstances allow, in particular, high site traffic and duration of domain ownership. For this purpose, data from counters, publications in the press, including “paper”, demonstration of activity are used - for example, if links to the site from thematic, benign resources, etc., are posted on the site.
All this does not apply to domains in .ru and .rf zones, since the jurisdiction of the WIPO Arbitration does not apply to them, and there was no unregistered trademark in the Russian courts and there cannot be any.
How to prove the defendant’s lack of rights and legitimate interests
There are two iron bases, when it definitely will not work:
- if the defendant has a trademark that matches or is similar to the extent of mixing with the domain, but is registered in another state. It is obvious that he has the right to register the disputed domain, and the claim for the return of the domain will be denied;
- The defendant has a business that for a long time uses a commercial designation that matches the disputed domain or is confusingly similar to it. And in this case, there is no hope of returning the domain.
Thus, considering the case against the foodandwinetravel.com domain, the arbitration refused to the plaintiff, who had a registered trademark, which included, among other things, a similar domain name in the .au zone.
For some reason, he did not pay for the domain on time and lost it. The defendant bought it from the registrar for $ 2500 and put it on the parking lot. The plaintiff sent a request, received an answer about the price of the transfer - $ 2500, and the correspondence was broken at that. The arbitration denied his complaint, stating that:
- the domain consists of the common words - “food”, “and”, “wine”, “travel”;
- It would be difficult for the respondent to assume that someone has the right to a domain in the form of combinations of these words, even if they were written without a space;
- the claimant used primarily the foodandwinetravel.com.au domain, rather than foodandwinetravel.com;
- the defendant convincingly proved that he had used a similar name in his business for a long time, was located in another country and could not know that the claimant had a registered trademark similar to this domain;
- The defendant bought the disputed domain for a very substantial amount directly from the registrar (case No. D2016-1953).
All this, in the opinion of arbitration, testified to the existence of rights and legitimate interests of the defendant.
Unfair actions when registering a domain
The following circumstances most often testify to bad faith:
- the domain immediately after the interception was put on the parking lot and put up for sale. This is considered to be confirmation that it was acquired not for use, but with the aim of obtaining illegal profits, hindering someone’s activities, harming competitors, etc.
- there was no content on the domain for a long time, there was a redirect to another site, about which users were not warned, etc .;
- domain is used by a competitor who has not previously used this designation in their activities.
For example, the plaintiff, the owner of the OKI-NI trademark, registered in the EU, the USA and Japan, simultaneously owns many domain names that redirect visitors to the main website oki-ni.com. The defendant was able to intercept the okini.com domain that had been accidentally released. The arguments of the plaintiff were as follows:
- the disputed domain is confusingly similar to the claimant’s trademark, the difference is only in the hyphen;
- “Okini” and “oki-ni” (Japanese. “Thank you”, “thank you” or “very much”) are unusual words recognizable all over the world;
- the defendant, using the intercepted domain, promotes its stores with an assortment similar to the plaintiff's assortment, i.e., it allows unfair competition and misleads the consumer.
The arbitration found it proved that the respondent, during the registration of the domain, allowed unfair behavior and decided to return the domain to the plaintiff (case No. D2011-1641).
It is also characteristic that the defendant did not participate in this dispute. Apparently, it was easier and more profitable for him to sell other domains.
By the way, unfair behavior during domain registration can be indicated by the amount that cybersquatter requests. So the plaintiff offered to buy the lost domain for $ 500 and received a counter offer - $ 5000. The arbitration agreed that the amount was many times higher than the cost of transferring the domain name, and the defendant registered and used the disputed domain name in bad faith (case # D2015-0226).
You can read more about the procedure for consideration of the case at the WIPO Arbitration in the previous article .
Source: https://habr.com/ru/post/347464/
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