Mess.com – a legal case of reverse domain name hijacking
Monte: Yeah, definitely, so it brought us together in the past. I mean, we knew each other before then when you were at Mail and stuff, but that was an interesting way that we got to meet each other. And since then, you know, you’ve been taking care of a lot of our customers and a lot of their cases, and god, you have a slew of wins in terms of, you know, case decisions with WIFO [ph] and UDRP processed, the reverse domain hijacking decisions, and one of the most, I guess the most famous, blatant case that you’ve just been involved in is a domain name case involving Mess.com.
Ari: Yeah, that was a real interesting thing. Let me just say, of course, that I only list the victories on the website. There are losses, I don’t put them up; they’re not as interesting. However, I still have a pretty good win-to-loss ratio. I win more than I lose, but I just wanted to make that clear. Yeah, Mess was a very, very interesting case, because this is a situation where my client owned a domain name Mess.com, and somebody went out and got a trademark for Mess.com. You know, clearly the idea was to try and hijack the name, you know, with a trademark. And this was an interesting case, because it raised the issue of how important, how valuable is a trademark. Is the fact that you have a domain name meaningless, can someone just, you know, go out and get Mess.com or anygenericword.com and take that? And it’s a scary thing, because one thing I think any domain owner should do is go out and see if their valuable domain names have trademarks that other people have registered, either, perhaps before the domain name owner registered the domain name or after, as with the case with Mess.com.
Monte: Right.
Ari: In fact, I know of at least one other case where a client of mine has a domain name and someone else went and got a trademark after the fact, and is actually running a business under that dot-com. I don’t want to say the name is, but let’s just say it’s Bottles.com
Monte: Right.
Ari: And they actually have a store called Bottles.com, even though they don’t have the domain name, and, you know, the fear is, you know, they’re gonna eventually come back in five years and try and take that name, and that’s why this case was really important. It was one of those nice cases, where the facts were just so tailor made for a reverse domain name hijacking victory for us. In this case, I actually was representing the client back in 2000, when the first facts of this case were born.
Monte: Now let--
Ari: Yeah.
Monte: --before you go on, let me--
Ari: Yeah.
Monte: --just ask you a question about what was the trademark filed for under, you know, ISPTI Gov [ph]--
Ari: For Mess.com?
Monte: Yeah, what was the description of the mark?
Ari: I think it was, you know, website design.
Monte: Oh, okay.
Ari: It was a website design firm called Mess.net.
Monte: Oh, I see.
Ari: And--
Monte: So they went in, registered the domain name, Mess.com, in an effort after the dot-com was already registered in an effort to hold this as a, “Hey, we have the trademark, here’s the issue,” and little did they know that you were going to be the attorney involved in proving this whole debacle.
Ari: Exactly. I mean, the reason--how it initiated was they contacted my client to buy the domain name back in 2000.
Monte: Oh, I see.
Ari: They said, “Hey, you know, we’d like to buy your domain name.” And my client gave them a number that they weren’t happy with and that was the end of it, so we thought. Four years later, this case gets filed, and what do we learn, number one, they try to use the fact that my client gave them a price that they could offer to purchase the domain name against them. You know, everyone’s seen that, a trademark owner calls up and says, “Hey, can I buy the domain name,” and you give them a price and they use it against you.
Monte: Right, right.
Ari: But what’s worse is that on the very day that they sent that e-mail, they also filed for that trademark application for Mess.com, the same day.
Monte: Oh, wow.
Ari: Which made it real nice for us to argue, hey, this is--there’s no coincidence here, this registration of domain name was part of their effort to get the domain name. And they represented that they had been using the domain name since 1996, which was peculiar, because that’s when they started operating the Mess.net website. And it was--you know, it’s peculiar, why would someone that operates a business called Mess.net have a domain name at Mess.com? I mean, have a trademark called Mess.com. I mean, why would you want people to go to Mess.com? It’s just completely illogical and, you know, it just settled the argument very well--
Monte: Right, that’s--
Ari: --for us.
Monte: Right, that’s an unusual case. So you’re able to go back, research when all of this was put together, and so when the panelists came up with their decision, they made it pretty blatantly clear that this was a misuse of what they’re supposed to be doing in terms of--
Ari: Yes.
Monte: --[inaudible] domain law?
Ari: Yeah. The conclusion was that it was actually the worst--the most egregious case of reverse domain hijacking that any of the three panelists had seen. It was so clear that there was no real evidence of use of this mark, Mess.com, by the trademark owner, that they had made that fact up, and that they had applied for a mark solely to steal a domain name. And it’s nice, you know, it’s nice when you get a case that’s so strongly in favor of the domain owner, when there’s so many cases that, you know, rail [ph] against cyber-squatters, etc.
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