Domain disputes and the limits of claim for return of domain name

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

Previous topic - Next topic

localseoconsultantTopic starter

It is not uncommon for a domain name to lapse due to non-payment, but the consequences can vary depending on the situation. If it is a new domain that hasn't been promoted and doesn't generate income, it can be simply renewed for the original price. However, if it is an established domain with a history of generating income, the "dropped" domain may need to be recovered to prevent the new owner from destroying a business or using it for their own gain.



There are various methods to retrieve a dropped domain, but contacting the new owner directly and negotiating a price is often the most effective. Claiming through the registrar is unlikely to succeed, as they will argue that they have followed the law and released the domain to a new owner.

If negotiation fails and the domain is valuable enough, WIPO arbitration could be utilized to file a claim for the transfer of the domain name. WIPO arbitration is considered the most authoritative and effective method for resolving disputes over domain names under the UDRP procedure. To succeed in such a claim, there must be evidence of bad faith by the new owner, no legitimate interest in the domain, and the plaintiff must hold a registered trademark identical or confusingly similar to the domain name.

In one case study, the owner of a bar named "Algiubagio s.n.c." in Venice, Italy, lost the domain name algiubagio.com to a person from Poland who used it for an Š°dult website. Although the bar owner had a trademark and submitted proof from the Italian trade register, the claim was denied since the defendant was not aware of the plaintiff's rights in another country.

If the plaintiff has a registered trademark, the decision in the domain dispute case may be different, according to the arbitrator in case number D2005-0183. However, if the trademark is not registered, WIPO arbitration recognizes the concept of an unregistered common law trademark. It means that if the domain name owner can prove that the domain has become widely known to internet users through prolonged use, they can hold the right to the trademark associated with its administrator.

This can be proven using high site traffic, duration of domain ownership, data from counters, press publications, demonstration of activity, and links from thematic and benign resources. However, if the defendant has a similar trademark registered in another state or a business that uses commercial designation similar to the disputed domain for a long time, it will be difficult to return the domain.

In case number D2016-1953 regarding the domain name foodandwinetravel.com, the arbitration rejected the plaintiff's complaint because the defendant had a legitimate interest in the domain. The plaintiff lost the domain due to non-payment, and the defendant purchased it from the registrar for $2500. The arbitration stated that the domain consisted of common words and was used mainly in .au zone, not .com. The defendant also proved that he had been using a similar name in his business for a long time, was in another country, and did not know about the plaintiff's trademark. Therefore, the defendant's interest in the domain was justified.

Unfair actions during domain registration such as putting the domain up for sale immediately after interception and redirecting to another site without warning can indicate dishonesty. In case the domain okini.com was intercepted due to an oversight, and the plaintiff who owned OKI-NI trademark registered in the EU, USA, and Japan, failed to prove that the defendant had acted unfairly.
  •  

MandoControl

It's important to note that this approach applies only to gTLD domains (i.e., .com, .net, .org, etc.). Additionally, international domain names can be renewed for up to 10 years in advance, while national domains can be extended for only one year.

Upon completion of the registration process, the domain is deactivated for 30 days - during which a screen saver will appear to indicate the absence of renewal, and email services will be unavailable. This downtime could lead to the website being temporarily inaccessible.

Nevertheless, domain name administrators may still renew their registration during this 30-day period. However, for international domain names, after this time has lapsed, the domain is completely deactivated. It can then be restored for a cost of x10-x100 times the renewal fee, or it may be deleted or transferred to an open auction.
  •  

sebastian

In case your domain is marked with a "redemption period" status on the WHOIS service, there may still be time to restore it by contacting the registrar. The duration and cost of restoration may differ between domain zones and registrars.

Another option is to contact the current legal owner and negotiate the fee for retrieving the lost domain. Many registrars offer a service to communicate with the domain owner.

If the above methods prove futile, registering a new domain and monitoring it can serve as a last resort. This ensures you will not lose the domain again in the future.
  •  

MashaMarkoma

In some cases, if a domain name is dropped and becomes available, it can be re-registered by someone else. This is usually done through domain auction platforms or domain marketplaces where individuals or businesses can bid on expired or abandoned domain names. The new owner of the domain can then decide to use it for their own purposes or sell it for a profit.

If someone loses their domain due to non-payment or an oversight, they may try to contact the new owner directly to negotiate the purchase or transfer of the domain. This negotiation process can be successful if both parties are willing to come to an agreement on a fair price. However, there is no guarantee that the new owner will be willing to sell the domain or negotiate a reasonable price.

If negotiation fails or if the domain is of significant value, the original owner may choose to pursue legal action to reclaim the domain. One option is to file a claim through the WIPO (World Intellectual Property Organization) arbitration process using the UDRP (Uniform Domain-Name Dispute-Resolution Policy). This arbitration process allows domain owners to assert their rights and seek the transfer of a domain from the current owner.

To succeed in a WIPO arbitration claim, the domain owner must prove several things, including evidence of bad faith by the new owner, lack of legitimate interest in the domain, and a valid trademark that is identical or confusingly similar to the domain name. Registered trademarks generally have stronger claims compared to unregistered trademarks, but in some cases, unregistered common law trademarks may also be recognized by WIPO.

It is important to note that the outcome of a WIPO arbitration case can vary depending on the specific circumstances of each situation. WIPO arbitrators carefully consider the evidence and arguments presented by both parties before making a decision.

When a domain name is dropped and becomes available for re-registration, it enters what is known as the "drop-catching" phase. During this phase, various individuals or companies may employ automated tools or services to quickly register the dropped domain as soon as it becomes available. This process can be highly competitive, as many people are looking to snatch valuable domains.

In addition to negotiating with the new owner or pursuing legal action, there are other methods that domain owners can try to retrieve a dropped domain. One option is to use a backorder service provided by some registrars or third-party companies. These services allow individuals to place a request to acquire a specific domain as soon as it becomes available for registration. However, there is no guarantee of success, as multiple people may be vying for the same domain.

Another method is to monitor domain auction platforms and marketplaces where dropped domains are listed for sale. This allows the original owner to potentially repurchase their domain if it appears for sale. However, the price may be significantly higher than the original registration fee.

In some cases, when a domain is dropped and subsequently registered by a new owner, the original owner may choose to explore legal avenues beyond WIPO arbitration. This could involve filing a lawsuit in a court of law, particularly if there is evidence of trademark infringement or other legal violations.

It's worth noting that the process of retrieving a dropped domain can be time-consuming, expensive, and uncertain. It is generally recommended for domain owners to proactively manage their domains to avoid lapses and potential loss of control.

Furthermore, it's important for individuals and businesses to conduct regular checks on their domains' expiration dates, set up auto-renewal options if available, and ensure that the contact information on file with the domain registrar is accurate and up to date. By staying vigilant and proactive, you can minimize the risk of losing your domain due to non-payment or oversight.
  •