Banking, Branding, Hijacking, and Lawsuits – Marchex Fights Back


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Banking, Branding, Hijacking, and Lawsuits – Marchex Fights Back

 

Marchex is the holder of a leading stored domain portfolio, a listing consisting of over 200,000 domain names purchased over 8 years ago from Yun Ye, at a final cost of $164 million. Some of the domains took shape shortly after the acquisition, while others are still available to buyers looking to purchase high quality .COM domains. Until as recently as 2012, buyers interested in domains owned by Marchex had no easy means of acquiring the sought after domains.

Brokers and individuals now have direct access to these domains that are presented in 21 categories, ranging from Business & Finance to Technology and Travel in a responsive, mobile-friendly design. None of the holdings has a fixed price, which offers potential buyers the freedom to express interest through inquiries, and submit direct offers for consideration.

With so many domains available from the 2005 purchase, we were sure to see a few bumps in the road along Liquidation Lane from Marchex with the sell-off of individual domains. We weren’t really expecting to see an RDNH (Reverse Domain Name Hacking) Lawsuit to hit the press as a result of one of the domains in their portfolio. Although, there has been a significant rise in RDNH claims being processed since 2000, with 18 being decided this year alone.

There are 11 reasons that are an attempt to identify and categorize the various circumstances cited by the RDNH panel to support their findings for each claim submitted for review. These are those reasons:

  • Bad Faith – No Evidence – the complaint provides no evidence of the respondent’s bad faith
  • Deception – deceptive behavior in complainant’s prior dealings with respondent
  • Delay – a long delay in bringing the complaint raises questions about whether complainant believes it has rights to the domain
  • Domain First – the registration of the domain predates trademark rights of the Complainant
  • Harassment – the primary motive of complainant appears to be to harass the respondent
  • Legitimate Interest – Complainant Knew – Complainant should have been aware that the respondent had a legitimate interest in the disputed domain
  • Misrepresentation – a misrepresentation to the panel, usually the omission of material information in violation of Complainant’s representation that the complaint is complete and accurate.
  • Plan “B” – the complainant is using the UDRP as an alternative acquisition strategy after commercial negotiations failed
  • Prior Court Case – Complaint brought to further burden respondent despite the matter already being the subject of a court case
  • TM – not valid – complainant did not have enforceable trademark rights
  • UDRP history – complainant has a history of filing unsuccessful UDRP complaints

 

In Marchex’s RDNH case, there are 2 domains named, these are the banco24horas.com and banco24horas.net domain names. The suit was filed after a lengthy trademarking battle beginning in November 2011, followed by a host of rejections for trademarks, the basis of rejections is summarized as follows: Banco24horas merely describes a feature of services offered, it is not incongruous and simply immediately conveys information relating to 24 hour banking service availability.

With English being the native language of US citizens, the second most used language is of Spanish decent and is quickly becoming as native to the country as the English language. Banco24horas is the Spanish translation of 24 hour bank, where it is simply implied and understood that banking services are available all hours of the day.

So, what’s the problem, why the lawsuit? Considering that the domains were effectively being utilized to offer a listing of services and availability of locations to find such services for the 7 years leading up to the filing of the lawsuit, and trademark battles in the wind, wouldn’t anyone in this position file for the return of their property? Or would you simply allow the UDRP to pass along your investment and clientele to another registrant from another country? This is precisely the reason Marchex has filed suit following the award of these 2 domains to Tecnologia Bancaria S.A. of Brazil.