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    Uniform Dispute Resolution Policy (UDRP) How to Reverse-Hijack a Generic Domain Name
    posted by tbyfield on Monday June 10 2002, @03:08PM

    dtobias writes "A recent NAF arbitration decision involving paint.biz provides a neat illustration of how to successfully pull off a reverse-hijacking of an entirely generic domain. In its sheer elegance, it provides a role model for all domain hijackers to learn from."



    The basic technique has been tried by many, but not always with success. Here's how it goes:

    1) Decide what generic domain you want -- either one in an existing TLD that's already been registered by somebody else, or one in an upcoming TLD being launched for which you'd like to get your desired name without taking your chances in the landrush lottery like the common rabble. It's important that the name not be trademarked by anybody else (this is more likely the more generic it is), since you don't want to wind up on the receiving end of a trademark infringement suit. It's desirable, but not entirely mandatory, that the domain in question not be in use for an active Web site run by its current registrant -- reverse-hijacking an inactive domain is much easier, though certainly a much higher Chutzpah Score is deserved by somebody who attempts such a scheme against an actively-used domain (such as barcelona.com).

    2) Start making some sort of use of the domain name in commerce. This would seem to be rather difficult, given that you don't actually own it, but that's thinking like a computer geek, who thinks that the proper use for a domain name is, like, as an actual address on the Internet. Think like a marketing type instead, and start using the name as a product name, as a slogan, as the name of a book, magazine (e.g., ec.com), as something plastered on the labels of paint cans, whatever... people might think you're crazy to publicize an Internet address that's not yours, but it's really crazy like a fox, as succeeding steps will show.

    3) File trademark applications in as many countries as you can for the name in question, complete with its domain suffix, citing the use in commerce in #2 as justification. Some trademark offices might still balk at letting the registration go through... some of their examiners still hold to the antediluvian belief that a domain suffix is merely a technical part of the addressing system and has no source-identifying significance for trademark purposes -- they'll claim that merely sticking ".com" or ".biz" at the end of a generic word doesn't make it any less generic. They need to Get With It and be educated in the sorts of marketing brilliance that gave the Dot Com Boom lasting value. But hopefully at least one country will grant the trademark... and even that is only an optional part of the scheme, as even a pending trademark application can be used as evidence of rights to the name.

    4) At the opportune time, file an arbitration case against the owner of the domain. If it's a domain in an old TLD (.com, etc.), the best time might be right after the domain changes ownership (by sale or by it lapsing and being registered by somebody else), as this resets the registration date so that it's later than your trademark -- this helps your case a lot, though once again you can go the High Chutzpah route of brazenly challenging a domain holder who's had the name long before you got the idea of trademarking it. In a new TLD, wait until the dust settles from the landrush, but not long enough for the registrant to actually get a real site set up, and file a challenge in the expedited challenge policy most new TLDs have, which favors trademark owners even more than the UDRP.

    5) Maybe you'll be lucky enough to get a respondent default -- most cases, even for highly generic domains, work out that way as there seem to be lots of domain speculators who aren't particularly interested in defending any one of the hundreds of names they registered. But in case the respondent has the effrontery to actually object to your scheme, saying that the name is a generic word -- he actually plans on using paint.biz to sell paint, imagine that! -- you need to take the high and mighty approach of insisting that your own use of the name is not generic in any way -- it's a highly distinctive and famous trademark. paint.biz is like, totally, different from just plain paint, dude! It would be best if, in your own filings, you avoid using the word in question as a generic term (call what you make "coatings" instead of "paint"), since that tends to bolster the respondent's case.

    6) Now, just cross your fingers until the verdict is in. Maybe you'll get an ingrate for a panelist, who thinks that a registrant of a generic-word name can actually use it without being in bad faith against a complainant he's never heard of. But maybe you'll get one who just says... OK... do you have a trademark? Oh, just a pending application? Well, that's OK... it shows you've got common law rights at least... has the respondent actually used the domain yet? No? Well, that shows bad faith, certainly. OK... (gets out rubber stamp)... judgment for the complainant!

    7) Just hope that the losing respondent doesn't actually have the resources to take you to court. Even then, however, you might be lucky enough to find a judge who sees things your way (Barcelona did), though you've got to be well-heeled to go this route as courts are much more expensive than the UDRP kangaroo courts.

    Valspar Sourcing, Inc. pulled this sting off successfully, and won paint.biz from its original registrant. Others have been less fortunate -- attempts to grab america.com, tobacco.com, and sealstore.com in this manner were failures. Is it just luck of the draw, in finding sympathetic panelists, or is it skill, in being able to put up just the right combination of arrogance and nonchalantness to make your case seem rock-solid instead of pathetic? You make the call.


     
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  • barcelona.com
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  • sealstore.com
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    How to Reverse-Hijack a Generic Domain Name | Log in/Create an Account | Top | 36 comments | Search Discussion
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    Re: How to Reverse-Hijack a Generic Domain Name
    by ANNODOMINI2000 (reversethis-{KU.OC.OOHAY} {ta} {D0002DA}) on Tuesday June 11 2002, @02:31AM (#7067)
    User #3359 Info | http://www.ad2000d.co.uk/
    I suggest the guy take them the Courts under the ACPA.

    Some of these Panelists should be sent back to college or somewhere else appropriate for them.
    [ Reply to This | Parent ]
    Wash out for those fish - their mine!!!
    by ANNODOMINI2000 (reversethis-{KU.OC.OOHAY} {ta} {D0002DA}) on Tuesday June 11 2002, @02:38AM (#7069)
    User #3359 Info | http://www.ad2000d.co.uk/
    Anyone registerd FISHING.NET ? You have? Watch out, someone might claim your Net is theirs... A very, very fishy business indeed really.

    What a load of crap in recent UDRP Decisions. Where on earth is an Appeals or Review Procedure within the so-called Arbitration system? No where. Why? Because it doesn't suit trademark holders. They don't want decisions overturned or reversed. They like it the way it is. Unfair.
    [ Reply to This | Parent ]
    Another bad decision
    by dtobias (dan@tobias.name) on Wednesday June 12 2002, @04:48AM (#7113)
    User #2967 Info | http://domains.dan.info/
    The .biz startup decisions that hand over generic words to trademark owners keep on coming... the latest gives about.biz to the owner of about.com. So why have new TLDs at all if they're just gonna do this?
    [ Reply to This | Parent ]
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    Re: How to Reverse-Hijack a Generic Domain Name
    by ANNODOMINI2000 (reversethis-{KU.OC.OOHAY} {ta} {D0002DA}) on Tuesday June 11 2002, @05:48AM (#7084)
    User #3359 Info | http://www.ad2000d.co.uk/
    True, PAINT.BIZ is one of the worst for unfairly transferring a clearly generic name simply because of it's domain extension; however, AIM5.COM is a far more blatant decision, as virtually of the Panel's reasoning is either factually incorrect, grossly assumptive, flawed, unfair or biased (this is clearly seen at http://www.ad2000d.com/ )
    [ Reply to This | Parent ]
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    Re: How to Reverse-Hijack a Generic Domain Name
    by dtobias (dan@tobias.name) on Saturday June 15 2002, @12:20AM (#7194)
    User #2967 Info | http://domains.dan.info/
    That story is full of holes. If you claim that register.com was unregistered, then what address did you go to to register it via register.com? If the domain was truly unregistered, that address would not have worked. More likely there was just a bug in their software and it was showing domains as available when they really weren't, so if you had actually completed the transaction you still wouldn't have ended up in control of the domain. Anyway, even if you did manage to change register.com, it wouldn't have "crashed the internet"... they're just one of a whole bunch of registrars, and aren't essential to the infrastructure of the net.
    [ Reply to This | Parent ]
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