Russ “Dutch” Boyd gets a royal flush.
the tables and WIPO.
Last month I wrote about arbitration proceedings for the domain PokerHost.net. The complainant — online poker company Poker Host Inc which operates PokerHost.com — seemed to be fudging dates in its filing.
The arbitrator agreed, finding in favor of respondent Russ “Dutch” Boyd, and also found Poker Host Inc. guilty of reverse domain name hijacking because of its fuzzy use of dates:
The Panel finds that the Complainant brought the Complaint either without any attempt to verify whether it had a case for claiming that the Respondent had registered the Domain Name in bad faith or knowing that it did not have any viable case on this point. In these circumstances, the Panel concludes that the Complaint was brought in bad faith and constitutes an attempt at reverse domain name hijacking.
This was a case of a generic domain being registered before a company decided to use the term as its trademark:
The Panel is satisfied on the evidence that the Respondent registered the Domain Name before the Complainant established its online poker room website and before the Complainant registered POKER HOST as a trademark. The phrase “poker host†has a descriptive connotation and the Respondent had no reason to suppose that the Complainant had any trademark rights in it when he registered the Domain Name.
The panel found that Boyd didn’t have rights or legitimate interests in the domain because it was merely a parked page. (It seems like you can flip a coin to decide if a UDRP panel will decide if parked pages are a legitimate use or not.)
The full decision will be posted soon on WIPO’s web site.
[Editor: if you are involved in a UDRP that you think is egregious, please contact me for a possible story.]
Reece says
Good for Dutch! 🙂
Steve M says
Congrats to Russ.
And let’s call what Poker Host really did in their illegal attempt to steal his .net…they lied.
Dutch Boyd says
I really think if Greenberg Traurig had played it straight in their attempt to UDRP this name from me, they likely would have won. If I’m reading these cases right, the trend is not good for domain investors for these reasons :
#1 – Most panelists treat domains as intellectual property and not personal property… registering and parking a domain or putting up a “for sale” sign on it doesn’t create an intellectual property right;
#2 It really doesn’t matter how generic a domain might be… because the generic terms just mean that there are a lot of people who can claim Intellectual Property rights to the domain. But if the owner don’t use it, then they aren’t included in that group of people.
#3 For any alternative extensions registered and not used (or worse… parked) where the .com is already registered, the complainant has a pretty good argument that the assumption should be the registrant knew the .com was already registered and thus COULD IN FACT ANTICIPATE a future trademark right even if one didn’t exist at the time of registration; and
#4 – Panelists can be convinced that each renewal counts as a new registration.
I think my win here really just boiled down to the Greenberg Traurig lawyers intentionally fudging the dates to make it appear to be a slamdunk case rather than a freethrow shot. They pissed off the panelist because he knew it would have gone unnoticed if I didn’t make that a major part of my response. So he hit them with the penalty.
Interestingly enough, I’m now currently defending an ACPA action in the 9th District here in Vegas for a different domain name that was coincidentally brought by Greenberg Traurig in December 2009. The domain had been registered in June 2004, expired in June 2009 and registered by Greenberg Traurig for their client in September 2009. I got a demand letter for five figures in December and when I responded with just two words, one of which was an expletive… well, they filed their lawsuit the next day.
Their new complaint fudged the facts in this case even worse than in the PokerHost UDRP because they claimed that I still own the domain and requested a transfer injunction (as well as the $100k in statutory damages). I think they must be too used to getting default judgments and settlements to actually worry about facts. Will be interesting to see how the judge ends up ruling on my motion to dismiss.
Both of these cases make me want to go take the bar just so I can pro bono defend every domainer that GTLaw tries to bully into submission.
James says
Dutch boy,
regarding #2:
Pokerhost is totally different from a keyword like Poker or Dishwasher though.