When the .biz domains became available, I made an "IP claim." Several
others also placed IP claims, understandable since we are not the only
company with this name. We received a claim and in some drawing, were
third in line.

Someone else sought to acquire the name and the IP claim processes
began. We were third in the priority queue and finally we bubbled up
to the top so we have a limited time to make our claim. The
bureaucracy of this system is pretty awful but basically, I had to
choose an arbitrator. They charge $1100 to arbitrate it. We do have IP
rights to this name so I am guessing we would prevail but do not know
for sure and do not know if there will be additional costs as the
process moves on.

Apparently the name was applied for by a domain registrar (squatter, I
think) who wants to sell it to us for the price we would pay the
arbitration company.

My question: Should I settle with the squatters? Will that end it or
can someone else then move in and challenge my ownership? Should I
proceed through the arbitration process?

We do want the name. I don't think it is worth it but company managers
do and my job is to get it, so I am trying to learn the simplest way
to secure it.

Hi there!

Ugh, what a nightmare for you.  I'm so sorry you have to battle it out
for a name you have rights for.  With a squatter, no less!

While it might seem tempting to settle with the squatter to get him
out of your hair, you probably shouldn't.  Here's why:

There are specific rules governing arbitration of a domain name
dispute:

Uniform Domain Name Dispute Resolution Policy 
http://www.icann.org/dndr/udrp/policy.htm

You say your name was acquired by a Registrar solely for the purposes
of selling it back to you.  According to the ICANN Policy Paragraph
4(b)(1):

"(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess
of your documented out-of-pocket costs directly related to the domain
name"

...this is indicative of a "bad faith" use of your name.  This is
certainly enough to swing the arbitration your way.  The decision of
the arbitrator is binding to both parties - once the decision is made
in your favor, that's it.  The squatter cannot file another dispute to
wrest the name back from you, and this also makes it difficult for
anyone else to try to take it from you.

That's not to say that the squatter couldn't sue to get it back.  It
seems that the courts are not bound by ICANN decisions - however, an
ICANN decision in your favor as well as the inability of the squatter
to provide ample proof of rights to the name would likely result in
the case never being allowed to proceed, or if by some odd mischance a
judge deigned to hear it, dismissed.  Unless there is some enormous
significance attached to the value of the name (for example, a highly
recognizable and much sought after name like CocaCola), most squatters
won't take things that far.  They take their lumps from the arbitrator
and move on to the next name to sit upon.

Settling with the squatters would be detrimental for two reasons:

1) if someone were to attempt to take the name from you at a later
date, it would weaken your position of "IP rights".  With a binding
arbitration agreement in hand, obtained by adhering to the rules,
future squatters will be reluctant to take you on.  Without it, you
may end up paying for arbitration eventually anyway.

2) the name may not even be worth what the squatters are demanding
anyway.  The .biz TLD is still quite new, it seems unlikely that the
name would be worth that much right now.  Remember, in paying for
arbitration, you're not paying for the name itself, you're paying for
the assistance in protecting your IP rights.  The value of the latter
vastly outweighs the value of the former, IMO, especially if there is
a strong chance that someone else will try to take the name away.  A
little protection now is far better than a lot more headaches later.

You might, before you make a decision on how to proceed, think about
having the name appraised.  I handled a domain name appraisal question
last month, which you can view here:

https://answers.google.com/answers/main?cmd=threadview&id=16488

The answer lists several appraisal services, some free, some for a
fee, most not even requiring that you officially own the domain to
find out what it is worth.  An appraisal certificate indicating a
lower name value than what the squatter is trying to wring from you
can also significantly strengthen your position.  If you have already
submitted your complaint, and wish to submit an appraisal certificate,
it may entail an additional $250 filing fee, as indicated here:

Paragraph 7
http://www.arb-forum.com/domains/RDRP/rules.asp

If you haven't yet submitted the complaint, or have done so less than
5 days ago, no additional fee will be required.

I've also gathered a few tips for you to think about, to prevent this
sort of situation in the future.  It's not 100% fool-proof, but it
beats the alternative of having to submit to arbitration constantly to
shoo the squatters away:

Protect Your Website from CyberSquatters
http://www.betterwhois.com/cybersquatters.htm

It's Time to Protect YOUR Domain!
http://www.soho.org/Technology_Articles/protect_domain.htm

I hope this has been helpful to you.  If you need further assistance,
please don't hesitate to ask for a clarification, I will be happy to
help you.

I wish you much luck!

missy-ga

---

Request for Answer Clarification by mrubenzahl-ga on 14 Jun 2002 19:40 PDT

Thank you for the answer. One piece that you did not answer is about
the arbitration process as defined for .biz domains through neulevel.
Will the $1100 arbitration be the end of it or is it possible we will
encounter trouble and the next step will be, "Oh, we have to do
such-and-such and that will be another $2000..." In other words -- is
the process likely to succeed, $1100 and that's that? Or are we facing
unknown peril?

---

Clarification of Answer by missy-ga on 14 Jun 2002 20:33 PDT

Hello again!

My apologies, I had meant to include the schedule of fees set forth by
ICANN:

Schedule of fees
http://www.arb-forum.com/domains/RDRP/fees.asp

"Participatory hearings
As stated in ICANN's Rules, in exceptional circumstances, for example
in the event an in-person hearing is held, the Provider shall request
the Parties to pay additional fees, which shall be established in
agreement with the Parties and the Panel."

If the dispute is particularly contentious, and an in-person hearing
is required, then there will be additional fees.  As you can see by
the note, however, these are considered "exceptional circumstances",
and you'll be informed of the cost in advance of accepting such a
hearing.  (In other words, no blind-siding.)

If there are no "exceptional circumstances", there are no additional
fees.

Please let me know if there is anything else I can help you with!

missy-ga

The researcher gave a good effort but missed a detail -- I was asking
about a domain name issue for the .biz domain, which uses a different
set of rules One of the Comments answered it more correctly; the
researcher ended up giving the opposite advice, which I think was
incorrect for .biz domains. I'm sorry to request refund because I
think the researcher's intent was good and was quite thorough -- just
missed an important, though arcane, detail.

The answer was good for standard domain disputes but not for .biz
domains, which use special rules under the STOP system. One of the
comments covered the situation a bit better.

Dear Questioner,

Having been in the domain registration business for several years (I
own http://www.needa.com), and involved in disputes (both sides), I
would respectfully like for you to consider the following.

First, please recognize that your dispute does not fall directly under
the Uniform Domain Name Dispute Resolution Policy (UDRP) as stated
above.  Your dispute falls under the STOP rules for new .biz
registrations as implemented by Neulevel, the .biz registrar:  A
complete overview of the rules and process is located here:
http://www.neulevel.biz/stop_overview/index.html

The STOP rules are based on the UDRP, and indeed the same basic level
of proofs are required to win a case, but they are not identical.

In response to the limit of arbitration fee, it will stay the same. 
The only caveat is that if after your initial claim submission and the
Respondant's response, if you decide you want to submit additional
information the arbitration panel may charge you to accept any
secondary submissions (this is at the discretion of the abritraiton
panel, the Panel may very well choose to not accept secondary
submissions).  You could avoid this by making sure your initial
dispute claim is full and complete.  Both arbitrators (not sure which
one is handling your case but it will either be the WIPO or the NAF)
provide full information about fees on their websites (listed below).

I think you should settle with the domain holder.   
 
I am familiar with severl domain dispute cases (including the .biz
STOP cases).  Unfortunately, mere suspicion of "cybersquatting" is
hardly enough to make a claim.  There has to be strong evidence of
intentional harm.  It appears from your statement "several companies
use this name" that the
domain in question is probably of a generic nature.  If so, it may be
extremely difficult to prove "bad faith" in your case.   Even IF you
can
demonstrate "bad faith" it will not be enough to win your case.   You
will have the further burden to establish your exclusive rights on
the domain or term in question (i.e. documentation that the domain is
dispute is "confusingly similar" to your trademarks) -- AND that the
current owner
does not have any legitimate right to use the domain.  Again, with
generic
names this can be extremely difficult.
 
I recommend you review domain dispute case history and proceeding
information in detail directly from the two arbitrators:
WIPO: http://arbiter.wipo.int/domains/cases/index.html 
National Arbitration Forum:  http://www.arb-forum.com/domains/ 

You should be able to find specific rulings related to STOP disputes.
 
I have copied some cases excerpts for you to consider -- in each of
these cases, the Complainant (that would be the entity wanting to win
the domain name away from the Respondent) lost.  These cases are
 
· Car Toys Inc .v. Informa Unlimited Inc [NAF Case No. F93682]  There
the domain name in issue was <cartoys.net>. The Complainant had sold
automobile accessory products and services since 1987 under the CAR
TOYS trademark, which was a US registered trademark / service mark.
The Complainant also owned the domain names <cartoys.com> and
<cartoys.org>. The Respondent was in the business of acquiring domain
names of common words for development and sale.
 
The Panel held: Car Toys Inc., has not proven that Informa has no
legitimate interests in respect of the domain name <cartoys.net>. The
CAR TOYS trademark is not fanciful or arbitrary, and Car Toys has
submitted no evidence to establish either fame or secondary meaning in
its mark such that customers are likely to associate <cartoys.net>
with CAR TOYS. Informa has demonstrated that the name is in use
elsewhere. The arbitrator finds, therefore, that Informa has rebutted
Car Toys' arguments ...and does have a legitimate interest in the
domain
name.  
 
·  In the domain dispute case concerning <concierge.com>, the Panel
ruled that "Here, even though the trademark and the name are all but
identical, the Panel has determined that the first person or entity to
register the domain name should prevail in circumstances such as these
where the domain name is a generic word" (National Arb. Forum, Case #
93547) 
 
· In Perricone v. Hirst, concerning <wrinklecure.com>, the Panel
issued a finding that the first entity to register descriptive,
generic domain names should prevail absent bad faith in the
registration. (National Arb. Forum, Case # 95104) 
 
· In domain dispute case concerning <prom.com>, the Panel rejects
Complainant's contention that its use of the generic word PROM is
somehow "fanciful" or "suggestive" as those terms are understood in
trademark law. PROM Software, Inc. v. Reflex Publishing, Inc. (WIPO
Case D2001-1154) 
 
· In Energy Source Inc .v. Your Energy Source, the domain name was
<yourenergysource.com>.  In relation to legitimate interests, the
Respondent asserted that it was making fair use of generic terms.
 
The Panel found: Respondent has persuasively shown that the domain
name is comprised of generic and/or descriptive terms and, in any
event, is not exclusively associated with Complainant's business. [NAF
Case No. 96364] 
 
· In Drew Bernstein v. Action Advertising, Inc (WIPO Case No.
D2000-0706), the domain in dispute was <lipservice.com>.
 
The Panel concludes: Certainly the Respondent had constructive
knowledge of the Complainants' federally registered trademark,
whatever the state of its actual knowledge. However, the evidence also
shows that the term "lip service" used in the Respondent's Domain Name
is not an arbitrary or coined term nor a distinctive trademark, but a
common English phrase susceptible of more than one meaning or
connotation, which can be and is used in many commercial contexts ...
For this reason, the Panel finds that the evidence is insufficient to
establish bad faith registration and use under Paragraph 4(b)(iv) of
the [UDRP] Policy.
 
--- 
My point being that case history seems to show that you would need a
very
strong case to be able to WIN against a current domain holder because
the burder
of proof rests on you.  You have to establish ~all~ three separate
issues to have a valid claim on a domain.  (The current domain holder
is therefore already
at an advantage)
 
If you have not yet engaged with arbitration and you do have
opportunity to buy the domain name at the exact cost of arbitration
(which seems to be what you are saying) I recommend you to buy the
name.  It is a sure thing.  It is faster.  It meets your stated goal
of acquiring the domain name.

Otherwise, I believe you risk being out the money, and possibly not
getting the domain name.  Thank you and good luck.

I also have lots of experience on both sides of domain disputes.  The
main key is the "bad faith" aspect.  Offering to sell the domain to
you does not constitute as bad faith in done in response to an offer
from you to buy it.  If you say "sell me this name" and they say "for
$5,000", there's nothing wrong with that. But if you say "I want this
name for my business" without offering to purchase it and they say
"for $5,000", it looks bad for them.  That's the basic "bad faith"
thing.

The other big problem here is that .biz domain used "IP claims" as you
mentioned.  This means that they already have the rights to this name.
 You may also have rights, but they got there first or won the
drawing, etc..  Since they also have a claim to the name it's going to
be especially hard to take it from them unless they specifically
offered to sell it to you first.

In this case, I would have to agree with webhosting and recommend
against arbitration.  I can assure that if the arbitration attempt
fails (which is likely in this case), their price will greatly rise.

I can also assure that there is very little value to a ".biz" name, no
matter what an appraisal might say.  I have personal experience I know
for a fact that a ".biz" is not very valuable.  Granted, some stupid
idiot might by one for a high price (though I have not heard of it),
it's not really worth it.
I hope my comment has been of a little help.  Thank you.

xemion-ga