NewYorker article gives insight into the Brand Naming process – and why your brandable domains may be so valuable
Naming companies spend months and weed through thousands of names before settling on a new brand name for a major product launch, according to a recent article entitled Famous Names, in the NewYorker. The lengthy article follows a company called Lexicon, and tells the story of the creative process that resulted in the brand names BlackBerry, PowerBook, Swiffer, and Pentium among others.
After reading about the amount of time, effort, and brain power devoted to coming up with a new brand name, I have a new appreciation for how valuable the domain name must be that is the exact match for that newly minted product name.
The number of high-tech trademarks has jumped from under 10,000 in 1980 to over 300,000 now, according to the article, suggesting a huge demand for brandable domains.
The usual qualities of a great name are that it is short, has a consonant-vowel pattern, and has a pleasant sound. But the art is to evoke the “story” of the product, even if it results in a product name that is not intuitive. A successful brand is likened to a short poem, capturing the essence of many associations and meanings in one word.
An abstract of the article is available for free. A subscription is required for the full article.
Just came back from the GeoPublishers expo in Chicago, put on by the new GeoPublishers association and organized by Borrell Associates. While it was a small gathering, the presentations were packed with useful, actionable information. It was encouraging to hear practical advice from successful Geo developers such as Sara Mannix (Saratoga.com, LakeGeorge.com, Albany.com among others) and Jessica Bookstaff Doppelt (PigeonForge.com, Durango.com and others).
My main take-aways are:
1. Michael and David Castello’s advice to drill deep. In other words, to focus on one city, and to develop rich content to be the authority site for that city.
2. Gordon Borrell’s presentation showed that tens of billions of dollars of local advertising currently spent on Yellow Pages and Direct Mailing is up for grabs as those advertising dollars migrate to the web, and capturing those advertisers should be a focus of geo-developers. Small business owners are even more confused by the rapid changes in the ad marketplace than we are, so we can add value by consulting with them and showing them how to use new media to their advantage.
3. Borrell made a strong case that effective advertising is ‘news’ and valuable content. He supported that claim with a chart showing that for the top five media/publishing sites by revenue (AT&T Yellowpages, AutoTrader, Groupon, CareerBuilder, Yellow Pages Canada) their content is primarily advertising. He reinforced this with on-point quotes: “Stopping advertising to save money is like stopping your watch to save time” (Henry Ford) and “Advertising in the final analysis should be news. If it is not news, it’s worthless” (Adolph Ochs).
4. Sara Mannix and Jessica Bookstaff Doppelt spoke about how you should put out roots into the community. Sara has had great success becoming the title sponsor for local events and charity galas in return for publicizing the events. Jessica interviews local businesses and develops itineraries around advertisers. Geo sites don’t need, and shouldn’t want, to compete on breaking news stories, but focused content on weddings, happy hours, and itineraries can make your sites the top authority on these topics that attract visitors who are of great value to advertisers.
5. A major theme was the rise of mobile and mobile advertising. Paul Wagner of ForkFly.com showed how mobile, and the rise of NFC (Near Field Communication) devices, are a new disruptive force that could disrupt online advertising, even as online advertising is upending traditional media advertising. Wagner demonstrated the ability of html5 to push apps directly to smart phones (bypassing the iTunes store), and the advertising value of being able to push messages through your own branded app directly to your visitor base. The underlying message is to make your sites mobile friendly.
6. Many presenters gave advice on how to build your membership. Techniques included overlays to request emails, starting facebook pages – even unbranded -for your local area, running contests and promotions to encourage visitors to share email addresses. Paul Wagner highly recommended that everyone read the American Society of News Editors (ASNE) guide to the 10 best practices for social media.
7. Spending time with Bill Hammack and Don Jones of NewOrleans.com and David Castello and hearing their enthusiasm for the brand value of dot-com city domains. They see a tremendous opportunity if geo domain owners can collaborate and, by combining our collective market reach, start bringing on board national advertisers. They believe that the traffic to geopublishers’ sites is high quality and high-converting. Once the national advertisers get a taste, they’ll want more.
The GeoPublishers association is a new association for geo-domainers that was started after the prior association, Associated Cities, dissolved amid acrimony between its founding members. While much is the same, much is new. Fred Mercaldo of Scottsdale.com and CitiesPlanet.com returns as President. Jessica Bookstaff Doppelt returns as a Board Member. Many of the members are the same. The goal is similar, to share best practices among geo-publishers and to find ways to work together for the benefit of all.
Yet much is different. Associated Cities was a for-profit group. GeoPublishers is a non-profit. Associated Cities was limited to dot-com owners of pure city domains. GeoPublishers is open to all publishers of geo sites, whether it is a dot-com extension, or a geo-based domain, such as TampaDoctors.com. The guiding vision is different. Bill Hammack and Don Jones of NewOrleans.com, who successfully started an association for independent yellow page publishers many years ago, see an even better opportunity in the geo-publishing space now. My understanding is that it was their initiative that is largely responsible for the establishment of the GeoPublishers association. They teamed up with Borrell Associates, a top consulting company in the local advertising space who organizes many conferences. The result was a very informative couple of days in the spirit of cooperating to move our industry forward.
You can read more about the GeoPublisher conference at Michael Cyger’s DomainSherpa. It was great to meet Michael and to hear about his plans and early successes with his hometown site, BainbridgeIsland.com. Ron Jackson endured straitened travel conditions to make his way to Chicago. His report on DNJournal should be out shortly is now available here.
What will happen to the value of dot-com domains when most online traffic no longer goes to dot-com domains?
Currently dot-com dominates with a likely 95%+ share of US traffic.
23 of the top 25 sites in the US are on dot-com domains according to Alexa. All the top 25 sites are accessible via a dot-com domain, as Wikipedia.org and CraigsList.org, the two non-.com sites in the top 25, use the dot-com versions of their domains to redirect to the dot-org site.
92 of the top 100 destination sites in the US use dot-com domains. The other non dot-com sites are comcast.net, wordpress.org, bbc.co.uk, thepiratebay.org, mozilla.org and dailymail.co.uk. The only one which is not accessible from the dot-com version of its domain is the dailymail.co.uk, near the very bottom of the list, as dailymail.com belongs to the Charlotte Daily Mail.
One of the key reasons for dot-com’s dominance, and for why dot-com domains are worth more than other extensions, is because most online users in the US interact almost exclusively with dot-com sites. The dot-com extension becomes synonymous with the Internet for most US consumers.
Now imagine a world where most of the top Internet sites have registered their own brand as a new gTLD. Apple will have .Apple. eBay will have .eBay. Amazon will have .Amazon. Google will have .Google. CNN will have .CNN. HBO will have .HBO. Dell will have .Dell. Ford will have .Ford. CitiBank will have .citi. The Gap with have .gap. And so on for all the large consumer brands.
In this world, most consumer interaction with the Internet will be through .brand extension domains. Most advertising dollars will be spent to promote websites with .brand domains.
A constant temptation for domainers is to develop one or more of their domains into a business. Domaining is hard, tedious, repetitive, and frequently mind-numbing. Building a business seems a lot more fun. It is creative, you have something to show to your friends and family, and there is the potential for high returns if you are successful. But the temptation to develop can be a very expensive and dangerous trap.
We look at start-ups raising millions of dollars and selling for perhaps billions of dollars. We think, “We are in the Internet industry; We have great domains”. We also think, “if I develop my domain name it will be worth more than leaving it undeveloped.”
While it might seem like a natural progression to buy a domain and then to build it out, launching an online business is entirely different than domaining.
The attraction of a valuable domain name is that it has a unique quality to it. But once you try to build a business on that domain name, you become one more start up business competing against hundreds of other more established and better funded competitors. Having a strong domain name may give you an edge but it is unlikely to be a sufficient edge to allow you to compete successfully against the better established businesses in the same space. A panelist at one of the New York TRAFFIC conferences said it very well. He said that you can have a killer domain name but as soon as you start to develop it, you turn that killer domain name into a mediocre business.
I’ve seen too many successful domain owners take the money that they made from domaining and lose it all trying to build an online business. Sometimes they would acquire the” perfect” domain name and would pay end-user prices to do so. They would sink much of the profit that they made from domaining into this purchase and into funding the development costs for the new business. To raise cash to fund the business they would steadily sell off their domain portfolio. Eventually the new business would fail and they would be left with no business, no domain portfolio, and no cash to show for all their efforts, even though for a while they had been successful and made good profits as domainers.
It has happened to domainers I’ve become friends with. They had a successful domain business, but lost it because of misguided optimism about starting up a new business.
I have fallen for the temptation to develop myself. Over ten years ago, I acquired my hometown domain, Annapolis.com, my home state domain, Maryland.com, and the domain for the top Maryland resort vacation destination, OceanCity.com. I thought an online travel guide would be a perfect online niche, as travelers use the Internet heavily and a website would be more accessible to travelers than a printed destination guide and wouldn’t have the associated printing and distribution costs.
The start-up costs were much higher than I expected. It took a huge amount of time and attention, and distracted me from the domain business. Fortunately the business stabilized and I now rely on my team to run the business without needing to be involved that much myself. Ten years of effort later, we are generating significant revenues from these sites but while we continue to grow the businesses , the competition from big players is more intense than ever and the sites haven’t yet generated the level of profits that would justify the effort put into them.
Even big players with substantial resources have been tripped up when they’ve moved into launching new businesses. GoodNews.com, a daily deal site launched by Kevin Ham’s Reinvent was shuttered. Vancouver.com was also launched by Reinvent, and while still online does not seem to be actively updated. Sahar Sarid’s Recall Media put substantial resources into the Bido.com auction platform and the Assista answer search engine. While Bido.com still survives under new ownership these ventures were not profitable. Rick Latona recently closed down his auction site after a considerable investment. Andy Miller and Mike “Zappy” Zapolin who scored some of the highest profile domain name deals including beer.com, diamond.com and computer.com, started Internet Real Estate Group to build businesses on top domains such as Phone.com and Safety.com but have found profitability elusive.
Many domainers, besides myself, have tried their hand at geo-development. Successful domainers such as Page Howe, Shaun Pilfold, Rob Montgomery, Ken Hansen, Warren Royal, Elliot Silver, Kevin Ham with Vancouver.com, and others have tried geo-development. While many of the sites are still active and generating revenue, they have shifted their focus elsewhere after the results were underwhelming.
The conclusion is not that all businesses started by domainers are doomed to fail. Some of these businesses that were not successful may be paving the way for much bigger future successes. Starting a new business in inherently risky. Sometimes it takes many failures before hitting on a success that more than compensates for the previous losses.
There are successes. Warren Royal’s Bobbleheads.com may be the best example of a domainer successfully launching an online business that sprung from his domaining business. Warren, I believe, has devoted himself fully to the Bobbleheads business, including making several trips to China to visit factories. Elliot’s DogWalker.com site is profitable and growing. Scott Day’s Digimedia has developed FantasyFootball.com and Jerky.com among others.
Many domainers have been successful with small scale development by adding content to sites, attracting visitors, and generating revenue from AdSense. But this post is not about Made for Adsense (MFA) sites. This post is about developing businesses that have direct relationships with customers and advertisers.
The skills required for successfully developing a business are very different than those required to be a domainer. A key skill for the successful domainer is to foresee the future value of a domain name. The many skills required for a successful entrepreneur include sales, marketing, development, partnership building, management, leadership, and strong organizational ability.
It is very rare that the same person who has the skills to be a successful domainer also has the skills to be a successful entrepreneur. Sometimes it takes a team. The Castello Brothers have been so successful with PalmSprings.com and Nashville.com because of the talents each brought to the business, with Michael having a knack for acquiring the domains and David being a fantastic salesperson.
The lessons I’ve learned are:
1. Development is much harder than it looks;
2. Having an excellent domain name is not enough to turn a bad business idea into a success;
3. If you are tempted to build a business on a killer domain (for example Shoes.com), pretend that you are building the business on a crappy domain (such as great-shoestore.net). If you are still excited about the business, and if the business plan still works, then it should work even better launching on a great domain. But if your business plan depends on the domain name to succeed (“We’ll get top ranking with an exact match domain”, “We’ll get advertisers/investors/publicity/customers because of our domain name”) then you may want to rethink the business plan.
4. Success in domaining doesn’t carry over to success in development. Just because you are good at one doesn’t mean you’ll be good at the other.
5. Do an honest self-assessment about your skills, talent, and motivation. Do you have the skills to be a successful entrepreneur?
6. If you are a successful domainer then you can consider yourself to be very fortunate. Is it wise to shift your time, attention, energy, and money away from a business where you are successful to risk your good fortune on an unproven new business?
7. Don’t risk everything on the new business. If you want to invest some of your profits in launching a new business, but your domaining business will survive even if the new business fails, then that is not a big risk. But if you put your domaining business at risk to launch the new business, the odds are that will be a mistake.
8. (from Francois) “Search the best name that will match your great idea, and not the inverse or you will probably fail.” Or, to put it another way, find a great business idea first and then choose your domain. Don’t do the opposite and start a new business simply because you acquired a nice domain and want to build it out.
Pig.com – transfer denied New Pig Corporation vs. Adam Dicker
Elephant.com – transfer denied Admiral Insurance vs. Adam Dicker
Funny thing is both pig and elephant offered money, then went to udrp and I won both of those UDRP’s, then they came back with better offers.
Dolphins.com – dispute terminated, later transferred
Flamingo.com – domain transferred
Octopus.com – domain transferred TheDomains write-up
Cygnet.com (young swan) – transfer denied owned at the time by Telepathy
Penguin.org – transfer denied
Tiger.com – transfer denied (thanks to the tip from M in the comments)
Dogs.com – Dog.com vs. Pets.com – transfer denied
Bulldog.com (and buldog.com – Dutch spelling) domain transferred
Pig.biz – (STOP procedure) – domain transferred Complainant, New Pig Corporation, is the same Complainant in the UDRP for pig.com above.
Kingfisher.biz (STOP procedure) – transfer denied
Raven.biz – withdrawn
(last five all thanks to Peter Müller of muepe.de)
Usually when a Complainant loses a UDRP, the domain owner never hears from them again. These animal domain disputes are unusual, as in several cases the Complainant wound up purchasing the domain from the domain owner after filing the UDRP. Adam sold pig.com and elephant.com to the respective Complainants. I sold Cygnet.com to the Complainant (the only time a Complainant has contacted me about buying a domain after losing a UDRP). And the Miami Dolphins terminated their UDRP but somehow still wound up with Dolphins.com.
Do you know of any other animal domain UDRPs?
AcornMedia wins Acorn.tv in a baffling decision.
First read Andrew’s post at DNW: http://domainnamewire.com/2011/09/13/acorn-tv-lost-in-udrp/. As Andrew says, it is a head scratcher.
Then read the decision: http://domains.adrforum.com/domains/decisions/1401194.htm
After reading the facts as summarized by the Romanian Panelist, Beatrice Onica Jarka, I thought there is no way that the domain owner should lose this. But he did.
My view is that the Domain Owner should win on all three UDRP criteria:
1. Is Acorn.TV confusingly similar to AcornMedia mark? No. If those names are confusingly similar, then NameMedia should sue Name.com, MediaTakeOut.com should sue TakeOut.com, RadicalMedia has the rights to all uses of the word ‘Radical’ and BuddyMedia should go after all ‘Buddy’ domains.
What I love is that AcornMedia has a disclaimer on their own site to protect against people confusing them with other, more famous, users of the name ‘Acorn’:
Note: We are not affiliated with the Association of Community Organizations for Reform Now (ACORN). Acorn is a popular name used by many companies and organizations. We have no affiliation with any other company or organization by the same name.
AcornMedia is admitting on their own site that they don’t have exclusive rights to the term “Acorn” and yet are saying the complete opposite in their complaint.
2. Domain owner incorporated as Acorn TV, has a checking account in that name, and has a developed site at Acorn.tv. That is about as clear an example of legitimate use as one could ask for.
3. Bad faith use. AcornMedia claims that because they produce video programming that Acorn.TV can’t post video on its site. Video is a form of communication heavily used on web sites. It isn’t like AcornMedia is manufacturing computer chips and Acorn.TV is selling computer chips as well. I hope Random House doesn’t use this argument to claim that I am competing with them if words appear on random.com.
The decision makes a big point out of the claim that Acorn.TV’s sale of Watches competes with AcornMedia’s own sale of specialty watches. AcornMedia has an online store that currently offers 525 items in a wide variety of categories. Exactly one of those items is a watch. This is a bogus argument.
In my view, the domain owner should have prevailed on all three UDRP criteria. Instead the panelist decided that AcornMedia had proven all three points.
This decision is a good example of how a panelist can concoct whatever tortured reasoning they need to justify their decision, even if it flies in the face of every element of the UDRP criteria.
Unfortunately under the UDRP no domain is safe. Perhaps selecting a 3-person panel and using one of the lawyers I mention in the last post would have made a difference, but perhaps not.
The domain community is fortunate to have several experienced, high-caliber lawyers who represent domain owners who are on the receiving end of a UDRP complaint. These attorneys have handled dozens, if not hundreds, of UDRP responses. They know the UDRP rules and procedures inside and out, are familiar with the records of many of the panelists, and know which cases to cite as precedence.
Defending against a UDRP complaint can be challenging. There are three factors that the Complainant must demonstrate. To summarize, the Complainant must show that 1) it has trademark rights in a mark that is similar to the Disputed Domain, 2) that the domain owner does not have a legitimate use for the domain, and 3) that the domain owner registered and used the domain in bad faith.
Almost all complainants can show some trademark use and most panelists do not consider domain parking to be a legitimate use. That means many UDRPs involving domainers are decided on the question of bad faith registration and use.
This also is tricky, as some panelists don’t think investing in domain names is a legitimate activity. They believe that domain names can’t have inherent value, but the only value in a domain would be to profit off of someone else’s use. Fortunately these panelists are in the minority, as most recognize that domain investing can be a legitimate business practice.
That is why it is very important to choose a three-person panel if you ever are involved in a UDRP. With a single member panel you could easily get one bad panelist. With a 3-person panel, the odds are much lower that you will get two ‘rogue’ panelists and hopefully you’ll have at least one reasonable panelist who can try to talk some sense into the other two.
It is also tricky to win if your domain is on a parked page, and any link on that page refers to the Complainant or a competitor of the Complainant. Many panelists will see this use as a bad faith use, and will also infer that the domain owner registered the domain in bad faith since he or she put the domain to this use.
It can seem that the odds are stacked against the domain owner when faced with a Complaint, especially if the Complaint is from a powerful company and is represented by a high-priced law firm. It doesn’t help that many of the panelists spent their careers working for those same high-priced law firms aggressively defending the trademark rights of powerful companies. Even worse, some panelists are active IP attorneys who will sit as a panelist on a UDRP case one day, and appear as a Complainant’s attorney the next day – perhaps even citing as a Complainant’s attorney a case as precedent that she earlier favorably decided as a panelist.
But somehow, in spite of the deck being stacked against domain owners, many domain attorneys have very good win rates in UDRP cases. They know how to make the argument that domain investing is a legitimate activity, and that the domainer’s registration and use of the Disputed Domain is consistent with this activity. They also know how to make the argument that just because a company chose to trademark a common word, it doesn’t mean that company gets to own every use of that word. They know how to make these arguments, and they know how to make them stick.
I hope you never need a UDRP attorney, but in case you do, here are some that I have worked with:
- Ari Goldberger at Esqwire.com
- John Berryhill at JohnBerryhill.com
- Howard Neu at NeuLaw.com
- Paul Keating at law.es
- Robert Kain at DefendMyDomain.com
- Zac Muscovitch at DNAttorney.com
Here are some others that I know of by reputation:
- Karen Bernstein at KarenBernsteinLaw.com
- Brett Lewis at LewisHand.com
- Eli Pearlman, at elplawfirm.com
- Stephen Sturgeon at DomainNameLawyers.com
- Carl Oppedahl at Oppedahl.com
- Stevan Lieberman at aplegal.com
- Enrico Schaefer at Traverse Legal
- Peter Mueller at BPM Legal (German speaking)
- Bret Fausett at internet.pro
This isn’t intended to be a complete list, and I apologize if I overlooked an attorney who should be included.
When I look at a domain as a possible investment, I am looking for something about that domain that is unique.
Another way to put it is ‘how easy is it to find a substitute for this domain?’.
I want to have pricing power with my domains. I want there to be something unique about the domain I own, so that if a potential buyer wants that unique quality then the buyer needs to buy that domain.
That’s why I like .Com domains. Any buyer who is serious about building a brand online will want the .Com extension and there is no substitute. If I own a .net, .info, or .us it may have some value, but the maximum price is set by the price the other extensions are fetching.
That’s why I like acronym domains. If my initials are ‘NEC’ then owning “MEC’ or ‘NED’ doesn’t help me. The acronym is unique and only the exact match acronym domain will provide the full benefit.
It’s why I like concept domains, such as Create.com, Promote.com, Random.com, Identity.com etc. If someone cares about branding on that concept, then they’ll need that domain and there won’t be many good substitutes. Maybe Creator.com is a substitute for Create.com or Promotion.com is a substitute for Promote.com, but these are equally valuable domains so there is still pricing power with Create.com and Promote.com.
It’s why category killer domains are universally desired, because in some sense if you own the domain you own the category, and there is no substitute.
If my domain is one of 100 similar domains, then I have no pricing power, I am competing against the owners of the 100 other domains in a race to the bottom for who will accept the lowest price. For example (and not intending to pick on this particular domain) BestWomensShoes.com is available for sale at BuyDomains. Yet FineWomensShoes.com and GreatWomensShoes.com are unregistered and available for $10. So how much pricing power does the owner of BestWomensShoes.com have?*
When I was a 13 year old kid who was getting into stamp collecting, I was given the advice to buy the highest quality I could afford. That was good advice and I’ve tried to follow it ever since.
The highest quality assets tend to appreciate more in good times and hold their value better in bad times. The price for an acre in the Mojave desert probably hasn’t increased much over time, but you’d have done better buying a building on Park Avenue even if the price seemed high at the time.
* After picking BestWomensShoes.com as an example for this post, I discovered that it was owned for several years by Zappos. Maybe it really is a good domain… But they let it drop, so maybe it isn’t 🙂
There’s a lot of discussion about whether any of the new gTLDs will knock .com off of its perch as the highest value extension.
I have a lot invested in .com domains, so I have a personal interest in the answer. I may also have a bias, but I know my desires won’t affect the marketplace so I want to get the right answer. If .com is going to be dethroned, I want to know ahead of time.
The evidence so far is that .Com is as strong as ever. The same questions were asked when .info, .biz and .pro were released. These new extensions had no discernible affect on .com values.
In certain country, such as Germany perhaps, the local ccTLD can be as valuable, or maybe even more valuable, than the .com. So there is evidence that there can be alternatives to .com that can compete successfully with the .com extension. If it can happen locally in a country the size of Germany, can it happen more globally?
Let’s step back and ask what makes .Com the most valuable extension currently. One factor has to be the expectation among the average user that a business will have a dot-com address. This is reinforced with 95%+ of the advertising, at least in the US, promoting dot-com addresses. And likely 95% of the interactions that users and consumers have with Internet sites, again in the US, are with sites at dot-com addresses.
So what will change that? My powers of imagination are not strong enough to envision a scenario where another extension would be so much more desirable than .com that the majority of the Internet economy will pick up and move to a new extension.
But what about Germany’s .de example, and England’s .co.uk example, and the Netherlands .nl example, and so on. What about the adoption of .me domains by start-ups?
What this means to me is that there can be a group with a shared identity that may adopt a different extension because within that group the culture and the expectations have adopted a new extension as an acceptable alternative to .com. That is clearly possible with a country where the country code is already a part of their identity. And it can be possible with different groups that actively create their own culture, such as perhaps with start-ups and .me or music lovers and .fm.
What would trigger the widespread adoption of an alternative extension by the society at large? It may not be possible to predict. But when the larger society is constantly reinforcing the dominance of the dot-com extension, where is the opening for another extension to take hold?
My guess is that instead of shaking .Com’s dominance, the new gTLDs will reinforce it. The prevalence of a large number of new extensions will weaken the ability of any one of them to gain the market/mind share to challenge .com.
The best analogy was that in the beginning there was .com, .net and .org. .Org had a separate identity for non-profits. .Net was really a subset of .Com, as Networks were still Commercial entities. My sense is that the extension that has been hurt the most by the release and commercialization of .biz, .info, .pro, .cc, .ws, .tv, .to, .co, etc. is .Net. It used to be the leading alternative to .Com. Now it is just one of many secondary extensions.
The release of dozens or hundreds of new gTLDs will create a Tower of Babel where confusion will reign, and where the desire for a common, shared language, which will be .Com, will be stronger than ever.
Rematch eleven years later results in loss for domain name owner.
Gassan Diamonds tried to win the Gassan.com domain eleven years ago and failed. They tried again last month and won against the same registrant.
A UDRP Panel needs to determine that a domain is registered in bad faith to order a transfer. So how can one panelist in 2000 determine that the domain was registered in good faith, but then in 2011 a different panelist determines that it wasn’t?
In this unusual case, the first panelist based his decision on a lack of evidence that supported either the Respondent or the Complainant. The Respondent claimed he had registered the domain for a client by the name of Gassan, who had never taken possession of the domain. Lacking any evidence to the contrary, the panelist in the 2000 UDRP decided to give the Respondent the benefit of the doubt.
Fast forward eleven years, and Respondent has used the gassan.com domain to redirect to competitors of Gassan Diamonds and has tried to sell the domain to Gassan Diamonds. David H. Bernstein, the panelist in the 2011 UDRP decision, determines that the intervening use demonstrates that Respondent’s intentions were in bad faith when it originally registered the domain, and awards the gassan.com domain to Gassan Diamonds.
One of the most important requirements of the UDRP is that the Complainant needs to show that the domain registrant registered a disputed domain in bad faith in order to prevail. Bad faith usage isn’t enough. Otherwise the appearance of one bad link could cause a domain owner to lose a domain that she had registered years ago in good faith.
Some panelists collapse the ‘registered AND used in bad faith’ criteria into simply a ‘used in bad faith’ criterion, eliminating an important protection for domain owners. Their reasoning is that they can’t know the domain owner’s intentions in registering the domain, they can only deduce those intentions from how the domain was later used. With this reasoning, making a finding of bad faith use also leads to a finding of REGISTERED in bad faith.
In the Gassan.com case, it seems that this is what Bernstein has done, with the added twist that a prior panel didn’t find that the Respondent had registered the domain in bad faith. I find it hard to fault Bernstein, however, as the bad faith usage in the subsequent 11 years undermined respondent’s explanation for why he had registered the domain in good faith, and supported the Complainant’s contention that it was a bad faith registration all along.
Do you agree with Bernstein’s decision overturning the previous UDRP victory for the gassan.com domain owner?