Return domain that you forgot to renew

Started by localseoconsultant, Oct 23, 2022, 05:24 AM

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localseoconsultantTopic starter

Domain name was not paid on time – this happens. However, a domain is different from a domain – it's one thing if you haven't renewed a recently registered one and, by and large, it costs exactly as much as it was paid to the registrar.
And it is quite another if it is long-standing, promoted and, moreover, generating income for your business. In this case, the domain name , referred to in professional jargon as "dropped", must be returned, otherwise, with due diligence, the new owner may not just destroy your business, but also take advantage of the fruits of your labors.



Return the unpaid domain. Question price

In attempts to return the domain, you can try various options, but, as a rule, it all comes down to contacting the person who intercepted it and finding out the price. Making claims to the registrar is unlikely to help: most likely, you will be informed that everything has been done according to the law, the domain name  has been released and transferred to a new owner.

Forums usually say that if the new owner refuses to cooperate, there is no way out of this situation. In fact, it is, but this pleasure is not cheap. The cost of the fee to be paid to return the unpaid domain is $ 1500-2000, not counting the cost of legal services.
But if the domain is really valuable, and the cost offered to those who intercepted it is lower than this amount, then, of course, it makes sense to solve the case without litigation.

WIPO Arbitration

But what if the domain is vital, and the appetites of the "invader" are too great? In this case, the issue can be resolved in the WIPO (World Intellectual Property Organization) arbitration by filing a claim for the transfer of the domain name  to you.

There are other bodies that consider disputes under the UDRP (Uniform Domain Name Dispute Resolution Policy) procedure, but among them the WIPO arbitration is the most authoritative and in demand.
This is confirmed by his extensive practice, which it makes sense to analyze in order to assess his chances of success. For our part, we note that it is possible to achieve a decision on the return of the domain if:

    the plaintiff has a trademark that is identical or confusingly similar to the intercepted domain;
    the defendant has no rights and legitimate interests in relation to the domain name ;
    there is evidence that the defendant acted in bad faith during registration.
    The absence of at least one condition will most likely lead to the denial of the claim.


A registered trademark is half the success

The presence of a registered trademark that is identical to the domain name  or confusingly similar to it is a serious bid to win a dispute. And here is an example of "from the opposite".

The owner of the bar "Algiubagio s.n.c." (Venice, Italy) did not pay for the domain algiubagio.com which was immediately intercepted by an enterprising figure from Poland. Defending his rights to the intercepted domain, the plaintiff referred to the fact that:

    he is the owner of the domain bar of the same name in Venice;
    the defendant has no rights or legitimate interests in relation to the disputed domain name, since he does not own a similar trademark;
    the defendant acted in bad faith by using the domain name to attract visitors to his аdult website.


As evidence, the plaintiff submitted an extract from the Italian trade register.

However, as the WIPO arbitrator pointed out, the validity of this document is limited to the territory of the plaintiff's location (Venice, Italy), and the defendant, located in Poland, should not have known about his rights to the disputed domain. On this basis, the claim was denied.

At the same time, the arbitrator pointed out that if the plaintiff had a registered trademark, the decision in the case could have been different (case no. D2005-0183).

But what if the trademark is not registered, as most often happens?
In this case, there is also an opportunity to prove your rights to the domain. The WIPO arbitration adheres to the concept of the so-called unregistered common law trademark.
According to it, the right to a trademark can be recognized for the domain name owner if, as a result of prolonged use, this domain has become widely known to Internet users and is associated with its administrator.

These circumstances can be proved, in particular, by high site traffic and the duration of domain name  ownership. For this purpose, data from counters, publications in the press, including "paper", demonstration of activity are used – for example, if links from thematic, benign resources lead to the site, etc.

How to prove the defendant's lack of rights and legitimate interests

There are two iron bases when it definitely won't work:

    if the defendant has a trademark that is the same or confusingly similar to the domain, but registered in another state. Obviously, he has the right to register the disputed domain, and the claim for the return of the domain name will be denied;
    the defendant has a business that for a long time uses a commercial designation that coincides with the disputed domain or is confusingly similar to it. And in this case, it is not necessary to hope for the return of the domain.


So, considering the case regarding the domain name foodandwinetravel.com , the arbitration rejected the plaintiff, who had a registered trademark that included, among other things, a similar domain in the zone .au.

For some reason, he did not pay for the domain on time and lost it. The defendant also purchased it from the registrar for $ 2500 and put it in the parking lot. The plaintiff sent a request, received a response about the transfer price – $ 2500, and the correspondence ended there. The arbitration rejected his complaint, stating that:

    the domain consists of common words – "food", "and", "wine", "travel";
    it would be difficult for the defendant to assume that someone has the right to a domain name in the form of combinations of these words, even if written without a space;
    the plaintiff used mainly the domain foodandwinetravel.com.au , and not foodandwinetravel.com;
    the defendant convincingly proved that he had been using a similar name in his business for a long time, was in another country and could not have known about the plaintiff's registered trademark similar to this domain;
    the defendant bought the disputed domain name  for a very significant amount, directly from the registrar (case no. D2016-1953).


All this, according to the arbitration, testified to the existence of rights and legitimate interests of the defendant.

Unfair actions during domain registration

The following circumstances most often indicate dishonesty:

    the domain was put in the parking lot immediately after the interception and put up for sale. This is considered confirmation that it was purchased not for use, but with the aim of obtaining illegal benefits, interfering with someone's activities, harming competitors, etc.;
    there was no content on the domain name for a long time, there was a redirect to another site, about which users were not warned, etc.;
the domain is used by a competitor who has not previously used this designation in his activities.


For example, the plaintiff, the owner of the OKI–NI trademark registered in the EU, the USA and Japan, simultaneously owns many domains that redirect visitors to the main website oki-ni.com . The defendant managed to intercept the domain name  that was released due to an oversight okini.com . The plaintiff 's arguments were as follows:

    the disputed domain is confusingly similar to the plaintiff's trademark, the difference is only in the hyphen;
    "okini" and "oki-ni" (Japanese. "thank you", "thank you" or "very much") are unusual words, recognizable all over the world;
    the defendant, using the intercepted domain, promotes its stores with an assortment similar to that of the plaintiff, i.e. allows unfair competition and misleads the consumer.

The arbitration found it proved that the defendant committed unfair behavior during domain name registration and decided to return the domain to the plaintiff (case no. D2011-1641).
It is also characteristic that the defendant did not participate in this dispute. Apparently, it was easier and more profitable for him to sell other domains.

By the way, the amount requested by the cybersquatter may indicate unfair behavior during domain registration.
So the plaintiff offered to buy the lost domain name for $ 500 and received a counteroffer – $ 5000. The arbitration agreed that the amount was many times higher than the cost of transferring the domain , and the defendant registered and used the disputed domain in bad faith.
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MandoControl

Make a note that this method is only possible for gTLD domains (Top Level Domains) (.com, .net, .org, etc).
It is also worth considering that international domain names can be extended up to 10 years in advance. National (so far) only for 1 year.
After the registration is completed, the domain is turned off for 30 days — a screen saver appears on it about the absence of renewal, mail does not work, etc. It is not difficult to notice that the site does not work for a long time.
The domain name administrator can still extend the registration during this period. International domain names after this period turn off the domain completely and allow you to return it for x10-x100 of the renewal cost (domain restoration), and then delete the domain or transfer it to an open auction.
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