Josh Bourne ⬥ 31 March
Domain Name Wire recently reported that Digimedia, who according to its website “owns and maintains one of the highest-regarded domain name portfolios in the world [including] Recipes.com, FantasyFootball.com, Chairs.com, Dress.com, Trips.com, and Clinic.com,” wasawarded over $100,000 in a finding of reverse domain name hijacking (RDNH) against GoForIt Entertainment in the Northern District Court of Texas.
RDNH usually appears in Uniform Domain Name Dispute Resolution Process (UDRP) arbitrations: if a Respondent has clearly registered a domain name before the Complainant acquired (or in some cases, even filed for) trademark rights to the term, and the Panel determines the Complainant has filed the Complaint in bad faith, then the Panel can find that the Complainant has attempted RDNH.
In this case, GoForIt, a company that runs an Internet guide and website directory at GoForIt.com, had filed a trademark infringement lawsuit against Digimedia in 2006 over the domain names WebDesign.com, Recipes.com, Org.com and others. It claimed that if one typed in the GoForIt trademark as a third level domain, as in GoForIt.WebDesign.com, the domain resolved to a parked page that took advantage of the GoForIt mark. GoForIt even contacted Tucows, Digimedia’s registrar, and convinced the registrar to lock Digimedia’s domain names.
It turned out that the third level of Digimedia’s domain names was wildcarded, meaning that typing anything before the second level would lead to a parked page.
So Digimedia countersued for RDNH and for tortious interference with a contract, and won a default judgment to the tune of $103,717.66.
This case should serve as a warning to smaller and newer trademark owners who think it will be worth a shot to try to claim a domain name they don’t have a right to. Not only will they be unsuccessful, they can put themselves at risk for an RDNH finding and substantial penalty, and ultimately hurt the image of trademark owners as a whole, basically giving responsible trademark owners a bad rap as domain name thieves.
Tags: Digimedia, Domain Name Wire, domain names, enforcement, GoForIt Entertainment, Internet guide, Northern District Court of Texas, parked page, RDNH, Registrar, third level domain, trademark infringement, trademark owners, Tucows, UDRP, website directory