Previous Registrant of iDancer.com Wins UDRP | DomainInvesting.com
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Previous Registrant of iDancer.com Wins UDRP

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The former owner of the iDancer.com domain name won its UDRP proceeding at the National Arbitration Forum. I think the decision is worth a read, especially for people who participate in expired/expiring domain name auctions.

According to NameBio, iDancer.com was won at a DropCatch.com auction in August. The high bid was $390. From my perspective, iDancer.com seems like it could be a descriptive domain name like so many other e- and i- domain names that have keywords following them. When I read the decision, I learned that the “IDANCER” term is actually trademarked in the US.

The company that owns the trademark previously owned the iDancer.com domain name. Due to some sort of error discussed in the decision, the domain name registration lapsed, and DropCatch.com caught it. The current registrant won the domain name, and after rebuffing the previous owner’s effort to get the domain name back, a UDRP was filed.

The complainant won the UDRP, despite the fact that the respondent responded to the UDRP. Personally, I don’t agree with the decision because even though “iDancer” is a trademarked term, it seems like there could be a legitimate way to use the domain name without violating the trademark. The owner had just taken possession of the domain name shortly after the UDRP was filed. I have plenty of domain names my company acquired and wants to build but have not had time to do so.

I can commiserate a bit with the former owner of the domain name. Assuming there were issues beyond the owner’s control that caused the domain name to expire, I am sure it is anxiety provoking to lose control of an important domain name. That being said, it is the domain name owner’s responsibility to ensure the registration does not lapse. It is unfortunate that the person who paid $390 for the domain name at auction is out the domain name and the funds he paid to acquire it.

If you are interested in reading the decision, you can read it at UDRPSearch.com.


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 (9)

    Nat Cohen

    The panelist uses circular reasoning in his decision.

    According to the panelist, because the domain owner did not transfer idancer.com back to the previous owner, that demonstrates his bad faith. So the only way the domain owner could have demonstrated good faith was to transfer the domain back to the prior owner? Hmm, that’s a bit of a Catch-22 situation.

    According to the panelist, because the domain was a drop caught domain that means that it must have had a prior owner, and apparently the prior owner must have continuing rights to the domain name.

    “The disputed domain name was acquired by means of an auction provided by a drop catch service, which means that Respondent knew or should have known of the existence of a previous owner of the disputed domain name when he applied for the drop catch service.

    As explained before, the drop catch services are only offered in highly desirable domain names”

    According to the panelist, therefore, any domain caught by a drop catch service not at the minimum price must have value because of the prior use, so by making use of a drop caught domain name you are trying to benefit from the value created by the prior owner. Therefore it is bad faith to bid up and win a domain at auction.

    The obvious error in the panelist’s reasoning is why would anyone pay hundreds of dollars to target the prior owner if it isn’t worth $10 to the prior owner to renew the domain name. The panelist is holding the new owner responsible for knowing that the prior domain owner didn’t intentionally let the domain name expire.

    Btw, the trademark is less than 2 years old and is for an app. What happens when you use the app? “A beautiful 3-D girl dances to your music!”.

    The panelist clearly thinks that this trademarked use in the US, trumps any other possible use for iDancer.com across the globe.

    If you are in Korea, therefore it is bad faith to register a generic term where the trademark rights are limited to the US.

    It is bad faith to put up a non-infringing website, that clearly makes no effort to pass off as the trademark holder.

    It is bad faith to try to make money, through donations, on your website.

    The contorted reasoning of this panelist to try to justify taking a domain where there is no actual evidence of bad faith registration or use is yet one more example that to many panelists the policy laid out in the UDRP may as well be ripped up and thrown away. The only thing that matters is that panelists have the power to order the transfer of a domain, and that they are empowered to call any situation they personally dislike ‘bad faith’.

    Word Mark IDANCER
    Goods and Services IC 009. US 021 023 026 036 038. G & S: Electronic software for computers and cellular telephones for viewing images and videos featuring male and female dancers dancing either on their own music or on music provided by the end user. FIRST USE: 20140101. FIRST USE IN COMMERCE: 20140101

    October 21st, 2016 at 6:49 pm

    Logan

    No prior owner is entitled to any domain name. Once the prior owner surrenders the registration, the prior owner’s registration rights end and are transferred to the current owner. Worse, in the case of a trademark-holding prior owner, to surrender the registration rights to a domain name matching the trademark is to fail to defend the trademark as well. The panelist failed to consider this legal aspect of intellectual property rights protection. Most likely, the panelist had an agenda here and chose to rule in line with that agenda.

    October 21st, 2016 at 9:42 pm

    Acro

    iDancer .com was sold for $1,806 in 2007, according to NameBio.

    Another sale at Sedo occurred in early 2012, to the Complainant. It’s therefore safe to assume they paid substantially more than the previous amount quoted at NameBio.

    I find the Chinese registrant’s rudimentary “donations” page and claims that their name means “dancer” in Chinese to be rather sketchy.

    They used a domainer-grade drop-catching too, DropCatch, to get the domain, in an auction no less.

    Most dancer, non-profit groups would not have such intent, and to be honest, $390 doesn’t seem like a huge amount – more like a bargain. They also own 254 other domains in various TLDs. Dozens of these domains were acquired via DropCatch; the Respondent doesn’t seem to be the average “non-profit” looking for “donations,” sorry Nat.

    The trademark exists, whether one disagrees with its age or strength.

    Logan, “No prior owner is entitled to any domain name.”

    This is incorrect. There are many UDRP cases that were won by previous owners that accidentally or for reasons outside their control, allowed domains to lapse.

    October 22nd, 2016 at 9:38 am

      Acro

      Typo: “drop-catching tool, DropCatch.”

      And not renewing a domain matching the trademark does not equate failure to defend the mark, by the way. Any lawyer would strike that statement out with a red pen.

      In reply to Acro | October 22nd, 2016 at 9:41 am

      Nat Cohen

      “the Respondent doesn’t seem to be the average “non-profit” looking for “donations,” sorry Nat.”

      Acro- I didn’t say the respondent was a non-profit looking for donations. I said that the panelist found “It is bad faith to put up a non-infringing website, that clearly makes no effort to pass off as the trademark holder.”

      Where is the bad faith use here? There is no infringing use. There is no attempt to pass off as the Complainant. There is no evidence that the new domain owner is targeting people who may be looking for the Complainant. A web page in English and Chinese with a drawing of a squirrel is not confusingly similar to an app whose purpose is to create a beautiful 3D girl gyrating to music.

      The website is alleging that it is connected with a non-profit dance group. Whether that is true or not, there is no evidence to support a finding of bad faith.

      The panelist is asserting, without evidence, that the new domain owner is attempting to profit from traffic from customers looking for Complainant. First, that is an argument that could be used to argue that any development of a drop caught domain is in bad faith – because the prior owner could claim that the traffic was intended for them.

      Second, there is no evidence cited in the decision that there was any traffic going to iDancer.com before it dropped. This does not appear to be a popular app. It is hard to locate in the App store. If I am using AppAnnie correctly, it shows no usage data at all for this app- https://www.appannie.com/apps/windows-store/app/idancer/

      So the panelist just yanked away the idancer.com domain based on his speculating that the domain was purchased to target traffic looking for the prior owner, with no evidence that there was any such traffic.

      The key problem with the decision is that it is all speculative without any evidence to back it up. Just about any legitimate use of a domain in similar circumstance would be vulnerable to the same speculative rationale. So as long as panelists can ignore evidence and rely on speculation instead, no matter what you do or what evidence you present, your domain is in danger of being taken from you.

      In reply to Acro | October 22nd, 2016 at 12:08 pm

      Acro

      Nat, it’s irrelevant if there is traffic or not, the domain is highly brandable and thus valuable.

      The Respondent’s statements about its intended function and purpose are very thin. WHOIS the domain and you’ll instantly see a screenshot highly representative of its use, hence potential (traffic or not) for the registrant.

      While there is no confusion by means of web site content, the domain is “confusingly similar” to the trademark – that’s the argument.

      I see bad faith in researching the Respondent’s claims and overall domain registration activity. Perhaps my logic isn’t aligned with that of the panelist’s or their argument; it’s what I see in this case.

      In reply to Nat Cohen | October 22nd, 2016 at 1:50 pm

    Meyer

    Nat did a nice rebuttal.

    An IP lawyer could have changed the outcome.

    I see the panelist was involved in a controversial case a few years ago.
    (Sorry about adding a link. I try to avoid that.)

    http://domainnamewire.com/2010/09/13/worst-udrp-of-2010-testosterone-com-awarded-to-complainant/

    October 22nd, 2016 at 10:26 am

      Nat Cohen

      Meyer,

      Thanks for the links to the Testosterone.com case.

      Attorney Brett Lewis did a nice write-up on that case –

      “Forget for a moment that testosterone is as generic a word as they get and could rightfully be registered for its value as a dictionary word. Triana concluded that the Respondent wrongfully targeted the Complainant’s trademark in bad faith three whole years before the Complainant, itself, had decided to adopt it. The Triana doctrine, as it will come to be known (you heard it here first) stands for the proposition that time travel and the sixth sense may be cited as evidence of a bad faith intent to profit off of a trademark that has not yet been registered or conceived of at the time of registration of a domain name.”

      http://www.trademarkattorneys.com/single-post/2010/10/11/NAF-Pumped-Up-on-Testosteronecom

      Also, noticed that in a case decided just last week by a 3-member panel, Triana dissented from the majority decision to deny the complaint and would have ordered the domains “cubatravelnetwork.net” and “cubatravelnetwork.info” to the complainant.

      His lengthy rationale includes this gem:

      “Furthermore, Respondent has a commercial site, notwithstanding, Respondent registered a network and an information gTLD, “.net” and “.info” respectively. Said gTLDs are not intended for commercial sites, hence, it is clear that Respondent knew of Complainant’s domain name, trademark and success when optinf for the disputed domain names.”

      http://www.adrforum.com/domaindecisions/1691456.htm

      As Brett rightly pointed out in his post:

      “It’s up to NAF and WIPO to set some basic standards of fairness and to enforce those standards by making sure that panelists who rule with the psychic friends network don’t rule again, or risk losing their credibility entirely.”

      Unfortunately, even after Triana made a mockery of the UDRP with the testosterone.com decision, NAF did not revoke his accreditation and continued to entrust him with deciding UDRP cases.

      Indeed, according to UDRPsearch.com, Triana has been involved in approximately 75 cases at NAF and WIPO since the
      testosterone.com decision.

      In 10 of those cases, Triana represented a Complainant attempting to seize a domain through the UDRP. Triana has a worse record than usual, losing 3 of the 10 cases. http://www.udrpsearch.com/search?query=triana+uribe&search=text

      In his most recent case he attempted to seize Alpina.com.ec (.ec is the country code for Ecuador) from Alpina Beverage SA, a registered company in Ecuador. Despite the Respondent failing to respond to the complaint, the panelist denied the complaint because of the obvious legitimate interest the Respondent had in owning a domain that matched its registered company name.

      http://www.adrforum.com/domaindecisions/1575849.htm

      Triana also lost his attempt to win the generic Spanish domain “portafolio.com”.

      Panelist: “- As indicated above, the word “portafolio” in Spanish has a generic meaning. Hence, the Panel considers that, rather than aiming at benefiting from the reputation and recognition connected to a Colombian newspaper, the Respondent was attracted by the generic character of the Domain Name.”

      http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0167.html

      One wonders about the obvious conflict of interest that arises from Triana’s being paid by complainants in aggressive efforts to seize generic domains through the use of the UDRP, and his concurrently serving as a panelist where he issues decisions that radically conflict with established UDRP jurisprudence where he issues decisions ordering the transfers of valuable generic domains.

      One wonders at the lack of quality control at NAF that they continue to accredit and assign cases to Triana.

      One wonders at what point NAF bears responsibility for the decisions issued under its authority.

      In reply to Meyer | October 22nd, 2016 at 11:47 am

    168

    I agree with Meyers,
    NAT, NAILED IT.

    “The key problem with the decision is that it is all speculative without any evidence to back it up. Just about any legitimate use of a domain in similar circumstance would be vulnerable to the same speculative rationale. So as long as panelists can ignore evidence and rely on speculation instead, no matter what you do or what evidence you present, your domain is in danger of being taken from you.”
    “One wonders about the obvious conflict of interest”

    I wonder about the excuse “an error in Complainant’s servers” Yea, right. Blame it on a Machine. This excuse is a keeper 😉
    Complainant use and knowledge of modern technology suggests they knew or should have known of the existence of registration requirements irrespective of a machine error which includes updated contact requirements for which there is no excuse since an email notification can be delivered on a multitude of machines.

    The complainer doesn’t have TM rights in China.

    Since there is excellent commentary after the decisions are made,a public comment period prior to a panel decision should also be made available. Domainers are pretty da**good at weeding out offenders and offending panelists.
    Crowd sourced dispute resolution. What a concept! This could be an option 😉

    iDancer.com’s TM is infringing on iDance.net (2002,no drops) and i-dancehk.com(2004)reg’d 2011 pre-dated use, and iDance TM!

    Both idance.net and i-dancehk.com “use” Electronic software for computers and cellular telephones for viewing images and videos featuring male and female dancers dancing

    iDance TM,
    Goods and Services IC 009. US 021 023 026 036 038. G & S: Downloadable and recorded software programs for arcade video game machines, namely, dance simulation video games and exercise and fitness games; computer software for use with computer games and video games, namely, dance simulation games and exercise and fitness games; computer game programs, namely, dance simulation programs, exercise and fitness programs; video game software and video game programs all relating to dance simulation games and to exercise and fitness games; downloadable and recorded dance simulation game programs as well as exercise and fitness game programs for personal computers; downloadable and recorded dance simulation game programs for consumer video games; exercise and fitness game programs for consumer video games; downloadable and recorded dance simulation game programs for hand-held games, also for mobile phones; exercise and fitness game programs for hand-held games, also for mobile phones; dance mats in the nature of video game interactive control floor mats; interactive dance simulation pads sold as a unit with computer game software for dance simulation. FIRST USE: 20080825. FIRST USE IN COMMERCE: 20080825
    IC 028. US 022 023 038 050. G & S: Electronic sports training and exercise simulators; electronic dance simulators; dance mats sold as a unit with electronic dance simulators; dance simulation pads sold as a unit with electronic dance simulators; arcade game machines, game machines and gaming machines, namely, dance simulation machines for fitness and exercise use and for play; gymnastic apparatus. FIRST USE: 20080825. FIRST USE IN COMMERCE: 20080825

    idancer.com’s TM 1.should have never been allowed in the first place,
    2.does not have protected use in China! ZERO EVIDENCE of use in the inherently distinctive protected territory, AND ZERO EVIDENCE OF numerous trademark registrations by the complainer around the world.

    This domain has several uses outside the TM and it’s protected use/territory as do thousands of other domains. The TM system demonstrates thousands of examples of the same exact match terms registered for different uses AND in different protected territories. PANELISTS SHOULD KNOW THIS.

    Arco,
    “I see bad faith in researching the Respondent’s claims and overall domain registration activity”.

    overall domain registration activity —- Seriously? Very few people research TM
    GLOBALLY before buying. Every bulk/indi investor, drop catcher and registry in this business is guilty of this “activity” especially in the case of keyword domains that have several different TM’s that could apply. ABSURD! What keyword doesn’t have a TM somewhere associated with it? Very few cover all possible use.
    Where’s your or the “Panels” research in the respondents sales/use activity? Is there evidence of sales targeting specific TM use? A large number of complaints? Losses?
    A bit too quick to slander a person with such generalized statements and minimal “research”/proof

    The panelist did the same.
    Server error and speculation is not a ligitimate excuse to have an expired contract handed back to you at someone else’s expense. Try that in Corporate America. LOL Everyone involved “Profited” EXCEPT THE LIGITIMATE OWNER WHO PURCHASED AND USED IT LEGALLY IN HIS PROTECTED TERRITORY where US law does not apply.
    The respondent has no obligation to recognize the US TM yet used against him.
    There is ZERO evidence that any of the 4(b) provisions apply only speculation.
    “respondent was not and has never been commonly known by the disputed domain name”
    What new enterprise is known by it’s new name/use ? Again, ABSURD.

    October 24th, 2016 at 12:56 am

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