Roping that domain back in
Domain names, quite contrary to my expectations a few years ago, have gotten more valuable than ever – especially, as Gerald Levine points out in this August 2019 blog post, “generic terms and combinations — dictionary words, random letters, and short strings.”
And where there’s value, there’s larceny. How, Gerry asks, do you get back a domain name that has been fraudulently whisked away from its rightful owner?
The question is, what legal steps must victims take and what are their chances of recovering fraudulently transferred domain names? The Uniform Domain Name Dispute Resolution Policy (UDRP) has been successfully applied, although some panelists have got it wrong, Lawrence Gurreri v. To Thai Ninh, FA100600 1328554 (Forum July 12, 2010) (<internationalcircuit.com>) where the Panel found that “alleged theft of a domain name falls outside the narrow scope of the UDRP.” The correct view is expressed in Anglotopia, LLC v. Artem Bezshapochny, D2013-0168 (WIPO March 13, 2013) (<anglotopia.net>) in which Respondent argued that “the Policy is not designed to deal with allegations of fraud or theft,” to which the Panel responded that that is only true “where a complainant does not have trademark rights and is seeking to recapture a hijacked domain name,” but where complainant has trademark rights the claim falls within the Policy.
In fact, panelists have not hesitated to condemn fraudulent transfers and return domain names to complainants on a theory that hacking and transferring are abusive registrations. . . .
Now, here’s an interesting angle:
Rather than test their claims under the UDRP, investor-resellers have turned to the Eastern District of Virginia, Alexandria Division (the location of Verisign, Inc., the dot com registry) to recover possession of the domain names under the ACPA. That court has proved particularly friendly to the argument that marketing and monetizing domain names supports common law rights.
Everyone knows the UDRP’s usefulness begins and ends with domain names, and that if you have a real trademark infringement problem, you need to go to court. But as Gerry notes, there is movement toward taking even domain-related matters to the real judges as well.
Get up to speed and read Gerry’s post.