Domain Law: You Can’t Hold A Domain Hostage
What happens when you own a domain name trademarked by someone else, and s/he wants it back? Must you give it up? Can you demand money for the prized URL?
We’ll answer these questions by reviewing a domain trademark case involving the WWE and an Internet entrepreneur.
WWE: A Brief History of Intellectual Property Disputes
World Wrestling Entertainment, Inc. (WWE) has a pair of intellectual property lawsuit notches on its gaudy belt.
- In 2002, the organization locked horns with World Wild Fund over the “WWF” acronym, and lost.
- In 2007, the WWE entrusted a domain trademark claim to an arbitration panel, and won.
The WWE’s Domain Name Trademark Law Smackdown
A domain name dispute anchors the WWE’s latest online intellectual property showdown. And with proper wrestling panache, the opponent, Emad Ibrahim, is vowing domain vengeance.
Emad Ibrahim: Domain Name Marketer
Ibrahim owned (and may still own) several clever URLs including www.wwe.org. One day, a representative from World Wrestling Entertainment (WWE) contacted him and asked for the domain. Ibrahim agreed to give it up…for $50,000.
WWE To Domain Name Owner: We Refuse To Pay You That Much For OUR Domain!
WWE refused, arguing that $50,000 overshot the URL’s fair market value. So, instead of throwing some dollars Ibrahim’s way, the WWE took the matter to the National Arbitration Forum, who, in-turn, sided with the wrestling association. Ibrahim had to give up wwe.org, for nothing.
“Cybersquatter” Vows Revenge Against Trademark Holder
Before handing back the prized domain, on wwe.org, Ibrahim posted:
“You said I was threatening and blackmailing you; no I was not. This time I am. And I am not afraid of your stupid multi-billion dollar corporation.
“You will be fighting with your trademark to claim the upcoming thousands of WWE-related domains. You will also be fighting for your business welfare, which will be destroyed by these domains’ websites that will be identical to your wwe.com website.”
Reverse The Arbitration Decision And Prevail Against WWE?
You’re wondering: Does Ibrahim he have a legal leg to stand on? Was wwe.org wrongfully stripped from his domain arsenal by “the man”?
UDRP and Arbitration Decisions Can and Have Been Overturned
On one hand, it’s possible to win a domain name trademark lawsuit after striking out with the Uniform Domain Dispute Resolution (UDRP) or arbitration processes. But a legal win is only possible if the UDRP or arbitration panel decisions erred, like in a recent case involving a medical facility.
So, theoretically, yes, Ibrahim may be able to wrestle back his domain via a lawsuit.
The Anti-Cybersquatting Act
To do so, Ibrahim would have to overcome protections in the Anticybersquatting Consumer Protection Act, which, essentially, gives trademark holders exclusive rights to URLs donning their trademarks. As such, Ibrahim’s legal leg, in this instance, is exceptionally precarious.
It’s never wise to say never, but in this scenario, it’s suitable to say: Our domain protagonist has almost no shot at winning this domain name trademark law battle against the WWE.
Do you have a domain dispute trademark law issue? Get in touch with Kelly / Warner law.