John Berryhill Wins Forces.com UDRP | DomainInvesting.com

John Berryhill Wins Forces.com UDRP

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I don’t have any legal expertise, so I generally stick to writing about UDRP filings that appear be fairly obvious. When Salesforce filed a UDRP for Forces.com, it bothered me quite a bit because of the descriptive nature of the domain name. It was also the first UDRP filed against the domain owner, and it didn’t seem right to me.

I just read the NAF UDRP decision, and the complaint was correctly denied by the three panelists (Honorable Neil Anthony Brown QC, Honorable James A. Carmody (Ret.), and the Honorable Bruce E. Meyerson (Ret.)). Skilled domain attorney John Berryhill successfully defended the domain owner’s right to this descriptive domain name, although a reverse hijacking finding was not sought by the respondent.

Unfortunately for the domain owner, his company now has a UDRP filing on its records, despite it being a victory in his company’s favor. In addition, UDRP defenses aren’t inexpensive, so the sunk legal costs just added to the cost of owning this domain name. It doesn’t seem very fair to me.

Here are some excerpts from the UDRP decision that I found most interesting, although you should read through the decision in its entirety, just so you can see how a panel decides a case like this:

The Panel finds it unnecessary to determine whether Complainant has rights in any of the claimed marks—SFORCE, FORCE.COM or FORCE—because the Panel finds that the domain name is neither identical nor confusingly similar to any of the marks. The word “forces” is not identical to any of the marks. The only real issue before the Panel is whether the word “forces” is confusingly similar to one or more of the marks.

In considering whether a domain name is confusingly similar to a mark in which a complainant has rights, the question becomes whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.”

Complainant is correct that in some cases the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. An example of this is found in Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). In that case, the respondent substituted a “k” for the letter “c” in the mark thus changing “ECOLAB” to “Ekolab.” The panel in Ecolab USA Inc. observed that the domain name was confusingly similar to the complainant’s mark because it was phonetically similar.

In Spark Networks USA, LLC the respondent added the letter “r” to the complainant’s mark, CHRISTIANMINGLE, creating the domain name, . The Panel correctly found the domain name to be confusingly similar to the mark, holding that the “two words are, therefore, almost phonetically similar, as well as being visually similar, and they are especially similar conceptually.”

These cases are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.

 


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 (5)

    Hi Elliot

    Hi Elliot:

    Interesting, post it at the right colum if you wish.

    Best,
    Sabian

    http://www.bloomberg.com/news/2012-01-06/name-calling-on-the-internet-is-serious-business-susan-crawford.html

    January 6th, 2012 at 10:42 am

    Josh

    I almost bought this name from the previous owner about 4 years ago but lost it to a last second offer. My offer was $7500 and they considered it but was told I lost out…so all things considered the cost of defending the name and original purchase price which I can only guess at still makes it a good buy.

    Mind you Ive lost $50k offers people were going to accept to someone stepping in at $150k so who knows lol

    January 6th, 2012 at 11:39 am

    Mike

    Sounds like Salesforce.com just wanted to steal the domain.

    What a dirty, low-down, scummy, company Salesforce.com is. It seems domain thieves are all they are.

    Salesforce.com should have been charged with Reverse Domain Name Hijacking (RDNH) .

    What ever happened to that “wall of shame” that someone had for companies like Salesforce.com that tried to steal domains? IMO, Salesforce.com should be on that list of domain thieves b/c stealing domains is what they are all about according to the facts presented in the UDRP which showed they had no right to the domain.

    Salesforce.com is a very dirty company nobody should do business with, in my opinion. Just look at who they are and what they do. Dirty people for having tried this.

    January 6th, 2012 at 12:14 pm

    jayjay

    My 2¢,
    Some recent UDRP findings especially in the dot co arena have been disturbing to say the least. One of interest if I call correctly was a LLL dot co that had no advertising material relevant to the complainant and was utilized as a c# compiler aid\utility tool, which again had no relation to the complainant’s business niche.

    Subsequently and for some uber-reasoning on behalf of the panel the complainant won and had the domain turned over to them. In all honesty I think it’s about time internet\ip law had an equal mechanism in place to protect domain owners from having a UDRP filed against them (maybe there is – though I haven’t heard about it yet!).

    With the LLL dot com’s for instance, and considering it’s (purported) to be a truly international extension this could be archived by the domain owner searching for nationalized namemark\trademarks or similar brandings then seeking a panel hearing to evaluate their domain and it’s current usage to consider weather it actually infringes on the current three pilers used in UDRP hearings with those marks.

    This is rational considering the value of these types of domains (and ultra-generics) and such a hearing could be legal grounds to protect the current owners from future UDRP action.

    January 7th, 2012 at 8:01 am

    LindaM

    Yeah its shocking how some litigious a-holes can come along and basically besmirch someone’s record with some meritless crap like that. It seems all too easy really and I hope all those Honourable qc’s or whatever and other kind of law folks can make it less attractive for the vexatious to take a potshot on these things.

    January 7th, 2012 at 5:44 pm

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