Non-profit domain woes - Domain Names forum at WebmasterWorld - WebmasterWorld

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Non-profit domain woes

Someone is abusing the dot-com of their name

buckworks

6:53 pm on Jan 15, 2019 (gmt 0)

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Someone I know has recently taken on some responsibilities on a local non-profit board, I'l call them XYZ Craft Market. She wrote to me yesterday wanting to pick my brains about their website.

One of the problems would be of interest to this forum: Someone in XYZ town registered XYZcraftmarket.com out from under them while they were just getting organized. He was not involved with the market or the board but apparently was having a fight with someone who was.

In nearly a decade since then, he has been making hostile use of the domain in a variety of ways. At the moment it is framing the site of a competing market in a nearby town.

The name XYZ Craft Market was trademarked in 2013, with the first use named as 11-19-2010, and first use in commerce 12-01-2010,

Trouble is, the domain was registered a few weeks before that. The timeline would certainly complicate a UDRP appeal.

The market is currently using XYZcraftmarket.org for their website, which seems sensible enough for a non-profit, but of course it galls them what's being done with the dot-com.. The guy has refused all pleas to stop doing what he's doing, including a letter from a trademark lawyer.

I get the impression that no one in the situation knew of the UDRP process, but because of the timelines their prospects might be iffy even if they went that route. They don't have deep pockets so they'd need to think hard and carefully before any legal action beyond what they've already tried.

I have often advised that it's a good idea to get control of the dot-com version of your domain name if you can, even if you actually use a different TLD. It's dismaying to encounter a situation where the thinking behind that advice is not just a theoretical concern, it's all too real.

I'd be interested to hear any thoughts or suggestions from this forum. Any advice for XYZ Craft Market?

Webwork

7:22 pm on Jan 15, 2019 (gmt 0)

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Some initial thoughts . . . and non-legal advice. ;)

As a lawyer it's been my belief and experience that certain SOBs only have their "moment of clarity / reality" when they have to reach into their pocket, either to pay for their legal defense OR to satisfy a money judgment.

A UDRP "might" work, despite the earlier registration, IF there's a factual basis for the inference that the registrant knew of the market's creation / existence, and therefore was alert to any "common law rights" to the name / domain.

I suspect there's enough here to prevail in a UDRP but, might it not be sweeter to "sue the #*$!"? It's possible that a lawyer who's a friend to the market would take a limited fee to get this rolling - especially if there's statutory grounds for recovering an attorney's fee. (Ask the local lawyer).

To me this looks pretty close to a slam dunk under various theories - ones that may or may not apply depending on the jurisdiction of the litigation.

Gather up screenshots. Gather up proofs. Get the history written up in detail, with names, dates, places, communications, evidence of bad faith, etc. The more and better organized the plaintiff is, when presenting the potential case to a local lawyer, the less resistance the lawyer may have to getting involved. Just don't go to the lawyer acting like y'all know it's a winner. Stick with "Here's the facts as we know them. Here's what we can afford. Here's what we are willing to do (or put up with) IF you will work for or work with us."

As to the last point - "work with us" - you MAY find a lawyer who is willing to work in a consultative manner to a party that otherwise is acting as their own (pro se) attorney. (It wouldn't surprise me if your defendant in this case choose to act as his own lawyer. Idiots often do so. Arrghh.) Such decisions by a lawyer will usually hinge on knowing the party-plaintiff and having a sound basis for a great deal of trust, i.e., "I know this person will not turn around and bite me / blame me / attempt to pull me in without pay IF this falters."

engine

7:59 pm on Jan 15, 2019 (gmt 0)

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One other suggestion: Is it worth trying the friendly approach and offering something for tge domain. I realise they don't havd deep pockets, but, it was just a thought.

buckworks

9:24 pm on Jan 15, 2019 (gmt 0)

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Engine, I don't know if the market ever made or even considered a purchase offer, but from the description I was given I doubt a friendly approach would have worked even if there were money attached. I see little possibility for a friendly resolution.

Webwork, thank you for your comments.

IF there's a factual basis for the inference that the registrant knew of the market's creation / existence

Yes, I think that could be shown beyond doubt. This isn't the sort of domain dispute where there's a name overlap between people/entities who are completely unrelated.

(The dispute over armani.com comes to mind.)