UDRP Filed on ETH.com (Update) | DomainInvesting.com
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UDRP Filed on ETH.com (Update)

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ETH.com UDRP

The three letter ETH.com domain name is the subject of a new UDRP proceeding at the World Intellectual Property Organization (WIPO). The case is WIPO Case D2016-0444. According to NameBio, ETH.com previously sold in 2008 for nearly $20,000.

The complainant is listed as ETH Zürich (Eidgenössische Technische Hochschule Zürich). I have never heard of this organization / company prior to seeing the UDRP filing. I did a Google search for a company with that name, and I believe this company uses the ethz.ch ccTLD domain name for its website.

I did a Whois search for ETH.com, and it shows that the registrant is a Brazilian entity called “CONSTRUTORA NORBERTO ODEBRECHT S/A.” When I typed in ETH.com, the domain name did not resolve. However, when I typed in www.ETH.com, I was forwarded to the OdebrechtAgroindustrial.com website. A historical Whois search at DomainTools shows that this entity appears to have owned ETH.com since at least the beginning of 2008. My assumption is that the company acquired the domain name via Moniker in January of that year assuming the NameBio sale information is accurate.

A press release on one of the company’s associated websites enlightens us to the connection between ETH brand and the company that owns the ETH.com domain name:

“On February 5, ETH Bioenergia assumed a new brand and changed its name to Odebrecht Agroindustrial. Founded in 2007 by the Odebrecht Organization, the company is pursuing the challenge of becoming leader in bioenergy in the country and, during the 2013/2014 harvest, it will invest more than R$ 1 billion in its operations — with 90% of this investment directed at expanding its agricultural area.”

I have no idea why the complainant thinks it has a chance at winning a UDRP proceeding for the domain name. It looks like the owner of the domain name had previously used it, and I would assume they are continuing to use the domain name so their clients who know the former ETH brand aren’t confused.

Unless I am missing something, I have no idea how the complainant even thinks it has a chance to succeed on any of the three tenets of the UDRP let alone all three. I am eager to see the decision.

Update: Decision was rendered and the complaint was denied. It does not appear that the domain owner requested a finding of reverse domain name hijacking, so that was not mentioned in the decision.


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 (20)

    Daniel Pfanzagl

    It’s the same complainant who already won ETHZ.com via UDRP in February.. seems they are trying to test the waters how far they can go via this tactic..

    see also here:
    http://domaingang.com/domain-law/another-llll-com-got-bagged-at-the-wipo-ethz-com-lost-via-udrp/

    March 8th, 2016 at 9:28 am

    Daniel Pfanzagl

    It’s the same complainant who already won ETHZ.com via UDRP in February.. seems they are trying to test the waters how far they can go via this tactic..

    ps: ETHZ is only known to those who regularly read science articles, scientificial studies etc. since they publish a lot of these in several science magazines..

    March 8th, 2016 at 9:36 am

    Tom T

    This should be a clear RDNH decision by the panel.

    Unfortunately until adequate penalties are levied for a RDNH finding it is basically of no significant importance.

    March 8th, 2016 at 9:41 am

    todd

    What are the exact penalties for RDNH besides someone writing a story that RDNH was found.

    March 8th, 2016 at 10:00 am

      Elliot Silver

      Nothing.

      On the other hand, there are no penalties for losing a UDRP besides losing the domain name. Imagine if they made changes and also UDRP meantising the name and a fine. I would be angry if I lost a keyword or short domain name due to a BS decision. I would be livid if I had to pay a fine on top of that.

      In reply to todd | March 8th, 2016 at 10:02 am

      DropWizard

      I have to disagree with you there Elliot. Tribunals frequently use the past behaviour as a guilt indicator in their decisions. That’s why you see it mentioned. So there is a penalty.

      In reply to Elliot Silver | March 8th, 2016 at 2:53 pm

      Elliot Silver

      Hadn’t thought about that aspect but you are right.

      In reply to DropWizard | March 8th, 2016 at 2:54 pm

    Gene

    I have personal familiarity with ETH Zurich, and I can almost guarantee you that they’re going to win this proceeding. ETH is a world renowned academic institution, where Albert Einstein taught.

    Anyone who thinks that ETH is going to lose a proceeding before WIPO is mistaken.

    March 8th, 2016 at 10:34 am

      Elliot Silver

      So Coca Cola could use the UDRP to get CC.com for a pittance just because they are a known entity? I think not.

      In reply to Gene | March 8th, 2016 at 10:37 am

      Elliot Silver

      You are incorrect. They lost.

      In reply to Gene | April 22nd, 2016 at 12:43 pm

    BuxUp

    I don’t think they have a chance to win this dispute.
    Lets see and wait for the decision.

    March 8th, 2016 at 10:50 am

    Seanic

    Agreeing with Elliot. How can this name be argued that is was bought in bath faith? The company bought the name for its company that uses the letters ETH, then in 2013 they changed company name. They decided to redirect the domain name to the new site, which is common to do for any company.

    For me, this is just a clear RDNH. This Swiss company has no integrity and are really just trying to steal the name. I mean a lawyer should know about the three things you need to prove for a Complaint to win a UDRP. Where can the lawyer argue that this name was registered in bad faith when the Respondent seem to have the legitimate rights and interest to use the name?

    March 8th, 2016 at 11:24 am

    Gene

    The name of the institution is “ETH”…so your Coca Cola analogy is irrelevant.

    Let’s see whathe the outcome is on this one.

    March 8th, 2016 at 12:31 pm

      Elliot Silver

      In case you aren’t aware, the complainant would need to satisfy all 3 elements of the UDRP:

      1) Confusingly similar
      2) Registrant lacks rights in the domain name
      3) Registered/used in bad faith

      They may be able to prove #1, but I can’t imagine how they can convince a panel/panelist that a company that was known as ETH doesn’t have rights to the ETH.com domain name and/or that the registrant is using it in bad faith by forwarding its domain name to the new website.

      Put another way, if ETH.com was awarded to the complainant and other panels ruled in the same way consistently, investing in domain names would pretty much cease to exist because companies could take domain names via UDRP rather than paying for them.

      In reply to Gene | March 8th, 2016 at 12:51 pm

      Gene

      I am very much aware – as a TM attorney, myself, and having filed UDRPs before WIPO going back to 2001 (http://www.wipo.int/amc/en/domains/search/case.jsp?case_id=2031 ) …But I appreciate the reminder, Elliot.

      I’m also a long-time domainer, so I understand fully that there is situations of overreach – and others, like this one, that are clearly not.

      ETH was founded in 1855 (https://en.wikipedia.org/wiki/ETH_Zurich), so to claim that the person who registered it a decade or two ago would not meet the threshold of ‘bad faith’ is absurd. This isn’t some rinky-dink, no reputation institution: There are as many press releases that come out of ETH regarding technological breakthroughs as there are coming from MIT. Do a quick Google search.

      BTW, of course companies can take domain names via UDRP if they have legitimate rights. That’s not news in 2016. All domainers face those risks, every day.

      In reply to Elliot Silver | March 10th, 2016 at 10:32 am

      Elliot Silver

      Hypothetical illustration:

      Let’s say your name is Edward Howard Tinkleberry and you have an asbestos abatement company with major corporate clients. You don’t want a cheesy company name or something generic (like California Asbestos Management), so you opt to call your company ETH Asbestos Abatement. The matching ETHAsbestosAbatement.com is long and difficult to spell/remember, so you made an investment in your branding and bought ETH.com for $20,000. Mind you, the clients who have million dollar contracts with you across California (and now Nevada because one client is growing rapidly) all call you ETH. Your admins also answer the phones “ETH” and your logo is a nice monogrammed ETH with “Asbestos Abatement” in smaller letters below.

      For 10 years, you’ve been using ETH.com and your business has been growing. It’s been growing so well, in fact, that the largest and most powerful asbestos abatement company in the region has made you an offer you can’t refuse. They pay you tens of millions of dollars for your business so you can retire and really enjoy life.

      This large company wants to roll yours up into theirs, but they don’t want to confuse long time clients who still use ETH.com to find phone numbers, fill out various submission forms to request service, and etc. Slowly, the big company that bought yours is changing the ETH branding to their own and they begin forwarding ETH.com to their website. This helps clients who visit the website once every 5 years understand that ETH was bought by another company and has another name. In addition, any inbound links about your company (ie you got a glowing review from a client or were mentioned in the NYT for superior service) now forward to the new website so everyone knows ETH is now known as something else.

      What would you say if some organization in Europe that is called ETH but is in a completely different line of business uses the UDRP process to take the name without paying. By filing a UDRP, they are saying it was bought/owned in bad faith, is confusingly similar to their brand AND the owner lacks rights in this domain name.

      Perhaps they offered a small amount of money that wouldn’t make up for any lost business or confusion so it was declined. Perhaps they figured ETH.com is now owned by some massive corporate entity and even if they offered 10x the value of ETH.com it wouldn’t even register as a blip on their income.

      The long and short of this story is that there can be more than one ETH, ABC, 123…etc as long as they don’t infringe on their trademark rights. I do not think the European institute should be able to take the domain name now owned by a South American company when they have the right to own it. I would understand more if ETH.com had advertising for college degrees on it or was clearly trying to confuse visitors. That is not the case here, and I think it’s a shame.

      I know my hypothetical example is a bit different, but I think it expresses the point. Company A called ETH rebrands and now their former url is forwarded to avoid confusing customers. I have no idea how the European institute can file a UDRP and claim that the owner has no rights to the name they once used and that it was bought/owned in bad faith. That makes no sense to me and seems abusive from my perspective.

      In reply to Gene | March 10th, 2016 at 11:03 am

      Elliot Silver

      Complaint denied.

      In reply to Gene | April 22nd, 2016 at 12:43 pm

    Andrea Paladini

    ETH BIO PARTICIPAÇÕES S.A. owns many TMs as well on the term “ETH”, in many different Nice Classes.
    IMHO it’s crystal-clear that the Brazilian company has a fully legitimate interest in this domain.
    If they respond with a good legal representation the complainant won’t get this name, no doubt about that.
    The Swiss guys are just trying to steal the domain from a legitimate owner … what a shameless attempt, it’s an insult to the intelligence of some of their institute notable alumni … 😀
    I think they are trying to profit from the current “confused” situation in Brazil (Odebrecht is involved in the Petrobras scandal), hoping that Respondent will not reply to the UDRP …
    Unfortunately for them, Odebrecht is a 31 bln USD revenue group, if they respond properly the predatory tactic of the Swiss institute will be easily stopped.

    @gene: from what you are saying it’s clear you have no idea of how TM laws work.

    March 8th, 2016 at 1:13 pm

    Ivan

    Maybe the point is: Wipo and the entire intellectual property world hate some countries, Brazil and India in particular, because they still have the balls to defend basic rights… (see the case of the nTLD .amazon or how those 2 countries threats patents on drugs…).

    I bet people at Rue de Colombettes are always happy to receive UDRP against Brazilian or Indian companies…

    March 8th, 2016 at 4:13 pm

    Jordi Gasull

    Probably ETH Zürich is aware of the imminent rise of Ethereum, abbreviated as ETH, and is trying to get the domain via UDRP before it reaches 7 figures. Be prepared to see a massive “ether” and “eth” domain registrations.

    March 9th, 2016 at 6:08 am

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