How to Potentially Lose $11,000+ in Less than a Year | DomainInvesting.com
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How to Potentially Lose $11,000+ in Less than a Year

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According to the World Intellectual Property Organization website’s list of pending UDRP filings, Inter-Continental Hotels Corporation / Six Continents Hotels, Inc. filed a UDRP for 1,529 domain names that they believe infringe on some of their hotel brands. Names such as candlewood-braintree.com, holiday-inn-dfw-north.com, los-angeles-commerce-casino.com, and staybridge-bwi-airport.com were registered by what appears to be one party, Unister GmbH (although I only searched a random assortment of these domain names).

It appears that many of these domain name I searched were registered recently – in mid to late 2009. For example, staybridge-suites-reno.com was registered July 21, 2009, hotel-indigo-london-paddington.com was registered May 23, 2009, and holiday-memphis-hacks.com was registered July 21, 2009.

To possibly make a defense even more difficult for the domain registrant, it appears that some of the names I searched are listed for sale at Sedo (holiday-inn-universal-studios.com for example), and I would think the Complainant could allege this to be a sign of bad faith.

The names I searched all appear to have a hotel booking engine on them, and when dates of stay are entered into the appropriate fields, visitors are redirected to HotelReservation.com, which appears to be owned by the entity that owns the other domain names I searched.

I can never predict what a UDRP panel is going to decide, but if the panel awards all of the domain names to the Complainant, that could mean a loss of upwards of $11,000 assuming a registration cost of $7.25. Ouch.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (31)

    mr x

    I think the company registered them in good faith as a direct navigation network to feed his hotel reservations site.

    I have seen companies be behind it with branding efforts but the names, when turned over to them, do not attract the revenue they would otherwise. It appears to me as a thinly veiled attempt to accuire the direct nave network for pennies on the dollar.

    It could be a bad thing for the hotel chain to take them from the owner. As a third party he is able to build and maintain direct navigation networks that feed his hotel reservations network. This cost the hotels nothing and feeds them customers.

    Lacking misuse of the brand I do not see the harm.

    January 8th, 2010 at 2:03 pm

      Elliot

      @ Mr X

      I don’t have a legal background, but isn’t bad faith considered when trying to make profit off of the mark of another company? They may see it as competition, especially if he is ranking for longer tail keywords. Instead of customers visiting the hotel sites, they are visiting his site, and the hotel has to pay him commission.

      January 8th, 2010 at 2:05 pm

      Elliot

      @ Mr X

      If they get in the business of doing that, what’s to say that someone else doesn’t do the same exact thing with 10,000 other hotel names? There are other extensions that could be done, too, so it could be a never ending situation.

      January 8th, 2010 at 2:13 pm

    mr x

    P.S. Did they try to explain to him that they do not want a third party direct nav network and offer him at least 11,000? Most business people I know would sell and walk.

    January 8th, 2010 at 2:08 pm

    Elliot

    @ Mr X

    No way of knowing until the dispute is posted. However, it probably would be less expensive filing a UDRP than paying the person, especially if they are using counsel on retainer.

    January 8th, 2010 at 2:11 pm

    mr x again

    Elliott, iIn response to your question. No legal opinions here, just what I hope is common business sense.

    It is common for trademarks being used to sell a product. How else do people find it.

    But the honorable thing would be to see if you could do as I suggested, talk to him and explain that particular company’s position on branding and offer him his expenses since they no decided thaey want them.

    Does that make sense?

    January 8th, 2010 at 2:11 pm

    mr x again

    Well, the branches of this dialogue are many.

    You have a point but if those new registrations were for the purpose of hostage taking I believe they will wind up in UDRP. They legit registrations for lawful intent are just in the retail churn. To shut down the domain name hold if they act in bad faith is simply to cut off supply of goods.

    The intent is the issue. If I am a legit hotel reservations company and I want to feed more traffic I would consider a direct nav network. I also sell that brand legitimately.

    In sales, you can use a trademark with permission. So here I am selling reservations, I figure out a way to attract customers and take a reservation for the brand holder. If they decide not to go there or it is full I am in a network I can find another hotel.

    Kind of like the car dealer concept. When they walk out of one dealership, they walk down the street to another dealership. The same number of cars are sold on that street daily and the best one sells the most. That could actually be the third party. It is common to pay a commission to the person who can close on legit business.

    The corp will be the top of most searches as an authority anyway. Some people just prefer a third party and go on down the page. I know one trademark holder who has authority position on keywords and encourages dealers to use the TM’s in URL’s. It shows a lot of poeple sell and trust the brand if done corrctly.

    And the beat goes on.

    January 8th, 2010 at 2:38 pm

    Dave

    How is this any different than using a City.com, CityState.com or CityExtention.com name? The city could come after all the names.

    January 8th, 2010 at 3:49 pm

    Elliot

    @ Dave

    As Mr. Page (UDRP panelist) said in the LomaLinda.com UDRP decision yesterday, “the general rule that Geographic Names Are Not Subject to Trademark Protection.”

    http://www.domaininvesting.com/geographic-names-are-not-subject-to-trademark-protection-09122

    Holiday Inn, Candlewood, Intercontinental Hotels…etc all of those terms are trademarks and they are protected. That’s the big difference.

    Essentially there isn’t anything really stopping a city from filing a UDRP but I doubt tax payers would be cool with a city spending $1,500+ legal fees on a .com domain name when there have been plenty of precedents set stating that the city doesn’t own the rights to the name. You can even see from some of Mr. Page’s past rulings that he isn’t exactly the most friendly towards domain owners, yet he still acknowledges that geodomain names aren’t generally protected by trademark.

    As far as I am concerned, if I did get a UDRP for one of my city .com names, and I happened to lose, I would file a federal lawsuit, costing the city and me tens of thousands of dollars probably. Again, this wouldn’t be the smartest financial decision, especially in light of the Barcelona.com decision.

    January 8th, 2010 at 3:54 pm

    Chip

    I can’t belive this has to be defended! These are clear cases of TM infringment. Unless the owner of the domains had rights to use the TM in marketing for their HotelReservation.com site (Which is sometimes the case with affiliates, retailers and resellers) these will be and shoule be transfered (most likely just cancelled)

    As J. Berryhill often states, most of the UDRP cases are open an shut cases of TM abuse (Take a look at 2009 cases) The ones we need to worry about are the cases and panelists who are changing the sprit of the original policy regarding Bad Faith usage (Parking, non-usage, Post Registration TMs, Generic word domains)

    The case decribed here is what makes domainers look like cybersqatters. We need to be seen applauding a transfer so that we are placed on the same side of policing as the general public.

    January 9th, 2010 at 10:57 am

    mr x

    Greeting Chip,
    Is the chip on youir shoulder?

    Ford st. Ford Dealer is a not a trademark problem, Fords.com is not a trademark.

    You can’t disect every single occurance of a word as a trademark. The use has a legit travel booking business ande is simply bring in customers to book at the hotel.

    If the hotel has decided they do not want this happening, as they apparently have, and since he has not had time to build value in his network with them a polite letter with an offer to cover expenses is the honorable way to go. They would probably discover a marketing plan they will WANT to go along with.

    Any other approach is hostile and short sighted. It only benefits attorneys when the law suits start before they parties have talked.

    Bad Faith is if he had a network going with traffic and tsarting directing it to the trademark holder competition. In that case I would agree that a policy of cutting of the domain would be appropriate until a URDP is complete.

    Chip, the world is not black and white. EACH CASE is a different issue and there is NO way anyone should just go along. And I am sorry to tell you that the PERCEIVED spirit of an issue is simply your opinion.

    My opinion is clear here and I have not more time to contribute. Why dont you start coming to Domainer conferences and get a little education about a domainer’s point of view.Good day to you.

    x -anonymous to keep Chip from stalking me. 😉

    January 9th, 2010 at 12:00 pm

    Elliot

    “Ford st. Ford Dealer is a not a trademark problem, Fords.com is not a trademark.”

    Yes… the word “ford” could be used by someone who utilizes the meaning of the term. One probably couldn’t sell cars, trucks, auto parts or anything related to the Ford brand’s trademarks. Just like someone could own Apples.com and sell apple sauce and apples, but they would be hardpressed to sell music and technology.

    The company in question is using Intercontinental’s non-generic trademarks in a way that competes with the hotel and IHG’s reservation system. I don’t believe they are using generic terms in a non infringing way.

    January 9th, 2010 at 12:18 pm

    Dietmar

    “I don’t believe they are using generic terms in a non infringing way.”

    Oh, yes they do, for example:

    fluege.de (flights non-idn-version)
    auto.de (car)
    geld.de (money)
    news.de
    versicherungen.de (insurances)
    hotelreservierung.de (hotel reservation)
    kredit.de (credit/loan) (price was 1,300,000$)
    private-krankenversicherung.de (private health insurance)
    partnersuche.de (partner search)

    On the other hand there are a lot of german users, saying, that they work as SPAMMER. I don’t whether it’s true or not.

    Ahoi!
    Dietmar

    January 9th, 2010 at 2:29 pm

      Elliot

      “Oh, yes they do, for example:”

      So you think the owner of Holiday Inn and Candlewood domain names aren’t infringing on the hotels’ brands? Huh?

      All of those names you cited are generic. The ones in this UDRP are not generic in my opinion.

      January 9th, 2010 at 2:32 pm

    mr y

    Keep in mind I do not know anything and am not claiming I know anything about law.

    A trademark is a trademark. No argument there.

    But like I said, how a trademark user wants to use the name is their business. For example:

    Boise Ford is a name the Boise Ford dealer uses in Yellow pages to get business. Trademark violation?

    Bosie-Ford.com is a name he used on the Internet to get business. IN fact, he comes up in a search on Ford Automobiles in second place below Ford for the folks that live in that region. People in Nevada see something else there. Trademark violation?

    If he misuses it to sell Chevrolets OR tarnish Ford’s brand he is in trouble. BUT in his used car lot he has Chevys he took in to put people in a Ford and they are for sale.

    Boise-Ford-Dealer.com is simply an advertising flyer to get people into the dealership. Ford knows it and wants to make money instead of impede the dealer’s ability to sell.

    Third party dealers are an important link in brand credibility. People trust a product when a thrid party endorses it who also sells other brands. Don’t mess with them if they are making you money.

    Many people had rather buy from a third party and the use of the name is the only way to advertise your wares. It does not convey ownership of your trademark to the dealer.

    A friend of mine sent me this quote recently. ” You might not know who is right, but you will know who’s in charge.”

    Let’s leave it to the trademark holder (and that is the REAL boss.) and we can get back to work making money.

    Bless you and have a good day.

    January 9th, 2010 at 3:37 pm

      Elliot

      @ mr y

      The difference is probably that he is licensed to use the Ford brand in his domain name and marketing materials. With Intercontinental filing a UDRP, it is likely they did not license the domain owner to use their brands’ trademarks.

      January 9th, 2010 at 3:40 pm

    Mr Y

    I forgot…

    If the hotel wants to use the direct nav network all they should have to do, since no value has been built up, is offer expenses and be given the names. That could be done with a letter CEO to CEO.

    If that does not come out right for the trademark holder then it is UDRP time. I have no problem with that as a business person.

    But to throw all those UDRPs and try to get them for nothing does not add up for a CEO. The CEO answers to the board and the only question they ask is how much revenue did you make last quarter.

    If he says he squandered 100,000 on an 11,000 dollar deal he looks really stupid.

    January 9th, 2010 at 3:46 pm

    Mr Y

    Elliot I agree.

    “The difference is probably that he is licensed to use the Ford brand in his domain name and marketing materials. With Intercontinental filing a UDRP, it is likely they did not license the domain owner to use their brands’ trademarks.”

    That is the essence of third party brand marketing.

    His intent is everything and we might find out he is a cybersquatter when the UDRP gets going.

    January 9th, 2010 at 3:49 pm

    Elliot

    @ mr y

    “If he says he squandered 100,000 on an 11,000 dollar deal he looks really stupid.”

    Why would the be squandering $100,000? I am 99% sure they pay a nominal fee for additional domain names owned by the same registrant.

    re third party marketing:

    There’s a huge difference between doing something with a company’s permission and not.

    January 9th, 2010 at 3:51 pm

    Dietmar

    “So you think the owner of Holiday Inn and Candlewood domain names aren’t infringing on the hotels’ brands? Huh?”

    No, of course i don’t think so!

    “All of those names you cited are generic. The ones in this UDRP are not generic in my opinion.”

    Okay, so I missunderstood your quoted sentence. Sorry for that.

    Infringing trademarks in the USA sometimes seems to be a hobby of new and (sorry to say) also old domainers. Here in europe the trademarks will be respected (hopefully).

    Ahoi!

    January 9th, 2010 at 4:07 pm

    mr y

    Elliott,

    “Why would they be squandering $100,000?” My attorney does not hang around and watch out for the company’s interest for free. He is 350.00 per hour. $1000 minimum. A corp attorney has a lot of assistants and they have salaries. I am willing to stand by my expense estimate for now, until I see the UDRP.

    “I am 99% sure” Me too. But I am only 10% sure of what I am 99% sure about.

    “third party marketing: There’s a huge difference between doing something with a company’s permission and not.” Agreed. I hope I find out they tried the reasonable route by a letter and an offer of expense of actual registration fees. Failing that, the UDRP’s make perfect sense.

    January 9th, 2010 at 4:26 pm

    Chip

    Mr. X:

    Thanks for your advice and education tips. If you took a min to see all the names in question, you would have to agree that they were all TM infractions. Not because of the names themselves, but because the names were being drivien to a hotel/travel affiliated website…within the same niche as the TM holder. I thought I made it clear that sometimes retailers, resellers and affiliates have rights to use tm in marketing efforts, and in those cases, I don’t believe they would lose these domains.

    Regarding your thought that the name has to go to a competitor to be infringing is NOT the case. TM holders have the rights to name in the industry and geography in which they are doing business. If it is too generic for that industry, they cannot (usually) get a TM. Even if the alternate site provides a benefit to the TM holder, they do not have the rights to use the name to profit off that mark. I think you are confusing TM rights with “Injury” where they would be entiled to damages. FYI, damages can be found even where the message is for the benefit of the TM holder (Weaking of a branding investment with disparate messages, colors etc…)

    HotelReservation.com is an awesome name and should have little problem with affiliate and partnership advertising opportunites using generic and geo based SEO. Seems like you might be able to sell direct advertising to TM holders as well.

    As a minor domainer who has attended a few domain conferences :) I am all for domainer rights to names. We all see how TM holders are taking advantage of lax and biased panelists to grab names they otherwise should have not right to. One of the major problems is that all too often the exposure domainers get in the news is when they violate TM’s with their domain business. If we can position Domainers as separate and against cybersquatting, we might be able to make better traction to improve our overall image and make doing business with end-users easier.

    January 9th, 2010 at 4:46 pm

    Elliot

    UDRP sure beats a lawsuit.

    January 9th, 2010 at 4:47 pm

    mr x

    Chip, I have a trademark and know the ins and outs. Gray areaas will always be part of trademark law. The owner has a right to control it.

    Let’s quit debating the fine points of TM law. I am not an attorney. I am just a businessman and have no idea how many loop holds there are to play in the TM game.

    TM holders have rights. So do domainers. I just try not to do anything bad until this Internet thing gets more mature.

    This is an interesting case so lets pick this up again after we see the UDRP.

    January 10th, 2010 at 2:20 pm

    Roconti

    If legal or not, I don’t really think they care about this sum.

    Unister bought news.de, kredit.de and shopping.de for about 2.5 million euros, all together. So 11,000 $ (7635 Euros) are peanuts for them I guess. Although nobody knows their turnover, everybody knows that they are Global Players in the online business. A business economist might evaluate that.

    Nevertheless, I think this is a very interesting topic and its outcome will be indicatory for SEO business.

    Cheers

    January 11th, 2010 at 4:51 am

    NetJohn

    Mr X

    The Fords Theatre is obviously in the clear for their current clean and clear usage on Fords.com and Fords.org … so would the central New Jersey town of “Fords” ….however, the way the registrant of Fords.Net is utilizing that domain seems quite questionable and legally radioactive on TM issues …it’s a parked page that takes advantage of the Mustang & Explorer manufacturer.

    That registrant has a Taiwan address, so it might be a bit of a challenge going the Court route becuse of jurisdictional issues … but on a UDRP I’m not sure yet.

    January 11th, 2010 at 10:30 am

    mr x

    Net John,
    I Agree. I think it reinforces the point tha trademark holders have to decide for themselves.

    Many of the like to let the thrid parties sell up a storm as long as they do not abuse the brand. That does NOT mean they are letting them claim the TM domain as their own even though on paper the third party does own it. The TM holder usually can easily get the TM if things turn bad since it was used to sell their brand.

    That relationship is built on sand rather than rock but as long as everyone is making money, what’s the harm? The thrid party is kind of like a retailer. If he loses the brand in his store he either closes or sells something else.

    In another corporate world the company wants to own everything and market direct. They can be real nasty and hostile about you having anything that evens looks like their TM. Those folks are the ones rampaging the net with TM noise and distractions.

    My opinion is if they want it they better buy it. If it is not regirtered it is FOR SALE to anyone.

    X

    January 11th, 2010 at 11:13 am

    url availability check

    Most likely the registered domains were an attempt to gain additional low cost organic search traffic. Maybe they should concentrate on quality SEO on their own website.

    HotelReservation.com is such a great domain name, yet they can’t even rank on page 1 in Google for their exact keyword of “hotel reservation”.

    A great new hotel search engine I’ve found is http://funnelscope.com. You can get input from friends via Twitter. Good stuff.

    January 11th, 2010 at 10:01 pm

    Dietmar

    Here I can see them on the third rank on page 1.
    (first is hotelreservationS.com, second hrs.com)

    Ahoi!

    January 12th, 2010 at 10:23 am

    Terry McCartney

    Hi Guys.

    Just stumbled upon this. My business is called Belmore Court Moteland our website is http://www.motel.co.uk. I also register other similar names but not http://www.belmore-court-motel.com
    hotelreservation.com has registered this and using a 3rd party booking engine to make the bookings but include a reservations fee $30.
    Can I stop them doing this?
    Ta.
    Terry

    February 10th, 2010 at 3:12 pm

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