Domain Name Dispute Reactor

editor@domainnameshame.com (Tucker Carlson) — Thu, 02 Apr 2009 14:30:17 GMT

Complainant is an individual who operates a number of sites, including "torrentreactor.net", which provides software and services designed to help users locate and download "torrent files" (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). However, most, if not all, of the files promoted by Complainant or available for download were unlawful copies of software, movies, music, etc. -- in other words, works subject to copyright protection.

Respondent is an individual with a history of cybersquatting. While the registration of the disputed domain name, "torrentreactor.com", predates the registration date of Complainant's domain name, Respondent did not obtain the registration until several years later after winning an auction process for the disputed domain name for the purported sum of $17,500. Respondent used the domain to link to a parking service (through which he received revenue) and eventually forwards to a site that provides pornographic material.

Prior to the filing of the Complaint, Complainant and Respondent engaged in a series of negotiations. Respondent offered to sell the domain to Complainant for a mere $150,000; Complainant countered with $30,000 and Respondent made a final offer of $50,000. Complainant then filed its Complaint, which made it pretty clear that Respondent's offer was rejected.

At the end of the day, the Complaint was denied. Complainant asserted trademark rights in TORRENTREACTOR based solely upon its use of the domain name "torrentreactor.net" and various logos he created and used via the site. However, mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right. While Complainant's failure to establish trademark rights was in and of itself sufficient to deny the Complaint, the Panel made note of a few other significant points, including a lack of merit to Respondent's argument that he has a right or legitimate interest in the domain because he paid $17,500 for it in auction. The Panel deemed that fact irrelevant since domain names are often traded and auctioned off for profit and, it is often the case that domain names that are confusingly similar to an existing trademark fetch a higher price among cybersquatters. In denying the Complaint, the Panel also noted the Respondent's prior history of cybersquatting and more than sufficient evidence to reach a finding of bad faith use by Respondent.

Notwithstanding the Panel's decision to deny the Complaint, it is significant to note that the Panel expressly noted that, in light of its finding of bad faith by Respondent, if Complainant was subsequently able to show that it had obtained the requisite trademark rights in the TORRENTREACTOR mark, it would not entirely rule out the possibility of the Complainant re-filing against Respondent (provided that the UDRP's relevant re-filing criteria were met). In any event, the Panel's denial of the Complaint would not prevent either party from pursuing the matter further in a court of competent jurisdiction. Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870

The “Authorized” Domain Name

editor@domainnameshame.com (Tucker Carlson) — Thu, 10 Jul 2008 16:51:22 GMT

The Complainant, Authorize.net, provides payment gateway services and allows merchants to accept credit card and electronic check payments through the merchants’ websites. The Complainant has been providing software and services for payment processing using the mark AUTHORIZE.NET since the late 1990s and holds several trademarks for AUTHORIZE.NET, the first of which was registered in January 2001. The Respondent first registered the disputed domain name, AUTHORIZE.NET, in 1998 and, since 1999, has been an authorized affiliate/reseller of the Complainant’s services.

The Respondent does not contest the Complainant’s trademark rights or the confusing similarity of the disputed domain name to them. Instead, the Respondent’s defense is based on its bona fide use of the disputed domain name and the Complainant’s knowledge and acquiescence of the Respondent’s use of the disputed domain name for almost ten years. In support, the Respondent points to the Complainant’s explicit approval contained in an email from the Complainant in November 2005.

In denying relief to the Complainant, the Panel noted that there is no proof, other than a conclusory allegation, that when the Respondent registered the disputed domain name almost ten years ago that it did so for any reason other than to participate in the Complainant’s affiliate program with the Complainant’s full knowledge and consent, and no allegations of fact were presented from which the Panel could infer bad faith at that time. The Panel further noted that the Complainant profited directly from each referral from the Respondent’s website that generated a commission and that, therefore, the Respondent has shown a legitimate interest in the dispute domain name. The Panel noted that the only “change” was the Complainant’s apparent “change of mind” after the Respondent’s more than nine years of use of the disputed domain name.

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Domain Name Dispute Reactor

The “Authorized” Domain Name