Domain Name News has scored the domain DNN.com. But there’s a story behind the domain.
Last week domain news site Domain Name News announced that it had acquired the domain name DNN.com for use with its web site. This is a great domain and the team at DNN deserves a tip of the hat.
Earlier today I was reviewing UDRP decisions and came across a three character domain decision found in favor of the respondent. As I read the case, it hit me: this is the domain DNN.com, which Adam Strong and DNN now owns.
A bit of research shows that DNN.com was previously owned by media behemoth Knight Ridder. In early 2008, NameBubble, LLC bought the domain name for $14,000.
In April 2008, DotNetNuke Corporation filed a UDRP to try to get the domain name DNN.com. The company claimed that NameBubble had offered to sell the domain to it; NameBubble says it contacted DotNetNuke only when a related company offered to lease the domain and to ensure that it didn’t create a trademark conflict.
DotNetNuke’s first UDRP filing went nowhere because the panel determined it didn’t have a trademark for DNN. A company related to DotNetNuke, Perpetual Motion Interactive Systems Inc, had filed a Canadian trademark, but Perpetual Motion Interactive Systems didn’t file the UDRP in its name.
In June 2008, Perpetual Motion Interactive Systems filed the same UDRP under its name but lost again. This time NameBubble hired domain name attorney John Berryhill to represent it. The panel determined that Perpetual Motion Interactive Systems did not show that NameBubble didn’t have rights or legitimate interests in the domain.
On the company blog, DotNetNuke’s Shaun Walker wrote about the UDRP filing back in June:
Research revealed that the dnn.com domain name had somehow changed hands in January 2008, and was currently in the possession of a domain name squatter. The squatter requested an outrageous sum of money for the domain name, and I responded that DNN Corp did not have the financial resources to entertain such a demand. The squatter indicated that another party in our ecosystem had expressed interest in the domain name, and it soon became apparent that he was attempting to leverage one party against another in order to try and generate the maximum profit.
Of course, very few people think of DotNetNuke when they hear the term “DNN”. In fact, the first thing I think about is DomainNameNews.com. It’s great to know that a company that understood the value of the “outrageous sum of money” it would cost to buy the domain ended up with it.
Too Many Secrets says
Andrew,
Thanks for the great story.
I hope Adam and his team take full advantage of the new domain and 301 redirect the old site to the new domain and continue to build out their brand. Great domain name!
dp says
And the chances of this stupid short-sighted company ever having the opportunity to acquire this name again are slim to none. Congrats Adam & Team.
Andrew says
dp – my position isn’t that DotNetNuke was stupid for not buying the domain, it’s that it shouldn’t have resorted to trying to “steal” it through UDRP.
Shaun Walker says
This is was most frustrating news for the DotNetNuke (DNN) open source community. Although the UDRP Panel acknowledged that Perpetual Motion Interactive Systems Inc. owns the registered trademark for the term “DNN”, they believed NameBubble Inc. still had rights in the name because NameBubble Inc. told the panel they purchased it with the specific intent to create a “Domain Name Network” website – and that they had no desire to sell it. Yet, within days after the UDRP ruling was handed down, NameBubble sold the name to Domain Name News for an undisclosed sum ( perhaps NameBubble was able to get more than the $60,000 they tried to extract from us ). Either way, the UDRP process failed to deliver on its mandate to protect the rights of registered trademark owners in this case.
Elliot says
There is a lesson to be learned from this whole situation. If you want or need a domain name for your business, you need to do whatever is in your power to acquire that domain name.
Also, once you go the legal route against a domain owner, chances are very good they won’t do business with you if you end up losing.
RE: DNN – As the panel acknowledged, the complainant did have rights to the “DNN” mark, but by no means is DNN exclusive to that single company. That said, they didn’t prove they had the rights to take the domain name.
jp says
Funny, as a long time .net programmer, DNN used to make me think of DotNetNuke, but no longer. I’m glad it has been re-defined DomainNameNews. Sounds like the guy at DotNetNuke was a douchebag. Whats wrong with leveraging 1 party against another to get maximum profit? Isn’t that just called “An Auction”. Dot Net Nuke was lucky that there were only 2 parties involved and not a whole room full.
Andrew says
Shaun, part of the difficulty here is that DNN.com is a set of three characters that can describe a myriad of companies.
Why should DotNetNuke get it instead of other companies with the “D-N-N” acronym?
jblack says
Shaun,
Your actions were despicable. You purposely tried to steal a domain name from a party that was NOT INFRINGING on your mark. That is the core of the issue you fail to understand–The UDRP did the exact job it was supposed to, thank goodness. Unfortunately, the process is flawed in that you get off scott free, you should be held responsible for associated fees for both parties. But you probably knew from the start it was a low risk proposition so taking the low road was not a difficult choice.
gpmgroup says
Shaun, I wonder if you should take time out and ask yourself if you are in the wrong part of the industry, because from where I am sitting your actions seems to be at odds with the ethos of Open Source and more akin to some of the sleazier corporate bully boys.
Your approach has certainly made me re-think/question if we should perhaps be looking so kindly on Open Source solutions for future projects. Perhaps our previous sentiment was misguided.
Michael Collins says
Shaun,
It is clear that your trademark does not give you exclusive rights to DNN. The less unique or fanciful your mark, the more likely that there will be non-infringing uses for it. Look at the bright side, there will probably be hundreds of new TLDs available soon and DNN.somethingelse will be available to you.
Congratulations to Adam for his aquisition. I have to go change my bookmarks now!
Michael
John Berryhill says
“Whats wrong with leveraging 1 party against another to get maximum profit?”
Of course nothing. The domain name had been owned by Knight Ridder newspapers for years, and all Mr. Walker was doing was simply waiting for someone else to buy it, so that he could snatch it away. Was his trademark being violated all those years that Knight Ridder had it? No.
But “leveraging” is not what was going on here, as the decision itself notes:
“Respondent asserts that prior to finalizing the terms of an agreement with a party interested in leasing the domain name, Respondent directly contacted Complainant about any possible trademark infringement.”
Mr. Walker is fully aware that the domain registrant was approached by a member of this vaunted “community”, and Mr. Walker has seen the complete email conversation that ensued when the domain registrant himself raised the question about whether this unsolicited purchaser’s proposal would violate a trademark. Of course, it turns out that Mr. Walker has been turned down by the USPTO three times to register the domain name in the United States, but he’s not going to mention that either.
Mr. Walker is also fully aware that there was no “leveraging”, and that the deal reached with the prospective purchaser had a potential value over time of more than $60,000.
He can lick his wounds as he sees fit, but what he cannot do is to publish malicious defamatory lies about what happened here.
On his own blog, he says, “Once a ruling is handed down, the DNN community will be the first to know the outcome.” So, the value of Mr. Walker’s word speaks for itself.
John Berryhill says
“three times to register the domain name” should be –three times to register the trademark–
Word Mark DNN
Serial Number 78624300
Filing Date May 5, 2005
Current Filing Basis 1A;44E
Original Filing Basis 1A
Owner (APPLICANT) Perpetual Motion
Interactive Systems Inc. CORPORATION CANADA 3328 Blossom Court Abbotsford, British Columbia CANADA V3G2Y5
Abandonment Date June 6, 2007
[b]Strike One:[/b]
2005-12-06 – Non-final action e-mailed
[b]Strike Two:[/b]
2006-05-23 – NON-FINAL ACTION E-MAILED
[b]Strike Three:[/b]
2006-12-05 – Final refusal e-mailed
Bill says
“Mr. Walker has been turned down by the USPTO three times to register the domain name in the United States, but he’s not going to mention that either.”
John – can you explain the correlation between the USPTO and domain names? I’ve never heard of the USPTO turning down domain names before.
John Berryhill says
It was a mis-type, if you read my correction just after that post.
I’m old. I do that sort of thing.
Commentor says
As an individual who has had dealings with Shaun and his crew, they are one of the most crooked bunch of thieves I’ve ever encountered. They threatened me with legal action because because my company name contained the term “DNN”! They claim to be open source, but really they’re just a front.
Matt Chapman says
Thanks to everyone for their support on this one. It’s refreshing to see the Panel get to the right answer now and again.
John Fields Sr. says
Interesting commentary. The only item which I would like to note from an IP law accuracy perspective is that a “non-final action” from the USPTO does not mean a trademark has been denied. More often than not it simply means the organization has been asked to provide additional information before the USPTO can proceed any further ( in my experience this can occur for a multitude of reasons ). A “final refusal” indicates a denial from the USPTO; but this could be based on the fact that the organization simply failed to reply in the specified amount of time to the action, or abandoned the proceeding altogether. Based on the case above, it appears the APPLICANT submitted their own trademark application ( probably could not afford a real lawyer ) and likely got overwhelmed by the registration process. Too bad for them ( they should have used a professional ).
John Berryhill says
Mr. Fields is absolutely correct. However, when we are talking about folks in the US who also do not have a lawyer, and they are contemplating purchase of a domain name for a particular purpose, what is the takeaway for such persons who (a) do not intend to use a domain name for the recited goods or services, and (b) actually perform a search and determine that an application was finally refused. Mr. Walker’s position is that a Canadian registration of “DNN” for particular goods and services confers upon him a global right to those letters for any purpose, against any party, anywhere.
David says
Hmm:
http://www.dotnetnuke.com/Community/Blogs/tabid/825/EntryID/1863/Default.aspx
Not actively being used like how? According to who?
The sooner you post the result on your blog, Shaun, the better. Then again, be ready for a possible barrage of comments. 🙂
cn says
Intersting discussion, but just for the sake of it – try typing DNN in your favourite Search engine, and see what results you get.
Andrew says
cn – are you suggesting that the biggest online company using a three character acronym should have the rights to the domain?
Bill says
For some real intrigue, take a peek at entry #15 in this thread – then look at the cached version of this page. Post 15 was originally registered by one -redacted- but now shows up as “Commentor.”
One has to wonder about the identity of the individual who originally made the posting, and their relationship to this site (if such alterations could be so easily made.)
Andrew says
Bill, I made the decision to remove this person’s name because of his closeness to DotNetNuke.