This is a guest post written by Brett Lewis of the Lewis & Hand law firm in Brooklyn, New York regarding a ruling from the Hayward.com lawsuit filed by WebQuest.com, Inc. Brett’s firm is currently representing WebQuest. You can read some background on the bad Hayward.com UDRP decision on Mike’s Blog. It looks like the litigation is off to a good start for WebQuest, and I wish them all the best in its legal battle for this valuable geodomain name.

In the case of WebQuest.com, Inc. v. Hayward Industries, Inc., 1:10 cv00306-OWW-JLT, the Court denied Hayward Industries’ motion for judgment on the pleadings, granting an early victory in the case to WebQuest.

Hayward Industries, which manufactures pool lights, pumps, and filters, had argued that even accepting all of the facts pleaded by WebQuest in its complaint as true, there was no question that WebQuest had acted in bad faith in registering the <Hayward.com> domain name.   The Court also granted WebQuest’s motion to strike Hayward Industries’ exhibits as “unnecessary evidentiary materials.”

Hayward Industries had tried to use those exhibits to support its claim for judgment on the pleadings, a claim which the Court said “bordered on the frivolous.”  The Court denied WebQuest’s motion for sanctions, however, finding that the motion, “was not so devoid of merit that it violates Rule 11.”

The case arose after WebQuest lost a UDRP decision over the <Hayward.com> and <wwwHayward.com> domain names and filed an action in Court to stop the WIPO-ordered transfer.   Although the decision comes at an early stage in the case, the Court’s ruling may signal that Hayward Industries will face a difficult task at establishing bad faith.

The Court stated that: “Defendant cites no authority for the proposition that bad faith may be found despite an entity’s lack of knowledge of a trademark holder’s existence.”  Given WebQuest’s claim that it registered the domain names for their value as geographic identifiers for the Bay Area city of Hayward, California, the Court found that, “Plaintiff’s activity does not as a matter of law establish the quintessential case of bad faith intent to profit contemplated by section 1125.”

In April, I wrote an article about the Wooot.com UDRP that was filed by the company behind the popular Woot.com website. Surprisingly to me, the UDRP panelist ruled in favor of the complainant, but instead of giving the domain name to Woot, it was canceled. By canceling the domain name, it would go through the expiration process and then become available for re-registration.

I just received my daily email from NameJet announcing the day’s 50 Most Active Pending Delete Backorders. On today’s list, I noticed Wooot.com listed. The domain name currently has 6 bids with a price of $69. Potential bidders must place their back orders for this domain name by July 1 in order to participate in the domain auction.

Of course any buyer should be aware of the previous UDRP filing and ruling. Woot doesn’t want someone else to own it, and they may take legal action in order to get it.

I read something pretty surprising on CircleID this morning pertaining to the Wooot.com UDRP decision that has reportedly been revised after publication. I initially wrote about the decision because I found it strange that the domain name was canceled by the panelist, and Andrew followed-up with more questions about the decision. Domain investor and frequent domain watchdog, George Kirikos, wrote the Circle ID article.

According to Kirikos’ research (and documented in Andrew’s article), someone removed the following important sentence from the UDRP decision after it had been published: “Complainant held a trademark registration for “AOL” and Respondent registered the domain name “iaol.com.”‘

Kirikos explains that the reason this line is important was that “This was completely out of place and nonsensical, because the complainant was Woot, not AOL, and iaol.com was a reference to a completely different case in 2002. This was the original “smoking gun” that caused the public to dig further into other cases of “cut/paste” amongst panelists. An archive of the original decision (cached on April 22, 2010) was made at Webcitation.”

There also doesn’t appear that there is any explanation as to why this UDRP appears to have been revised post-publication nor does there appear to be any notice issued on the National Arbitration Forum website. It doesn’t seem right that a UDRP decision could be revised after it’s issued without any sort of explanation or notice, especially when this particular section of the UDRP is one of the things that made Kirikos identify the cut/paste UDRP problem in the first place.

I was looking through a UDRP decision today regarding the domain name Wooot.com, which was filed by the company that owns the popular Woot website. It didn’t seem like a real surprise that the company won the decision, but the result of the decision was pretty surprising.

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wooot.com> domain name be CANCELLED

Instead of giving the domain name to the complainant (which happens almost all of the time when a UDRP case is won, the panelist (Hon Nelson A Diaz (ret.)) opted to cancel the domain name instead. To make things even stranger, there was no reasoning supplied by the panelist for doing this.

I hope the complainant is good at catching drops – or they don’t get this panelist on the next go-round if it’s picked up by another party.

Thanks to George for the tip.

A few days ago, Mike Berkens reported on the UDRP decision for 7Days.com, a decision that went in favor of the complainant. The owner of the domain name did not file a response to the UDRP, so he couldn’t present his case for ownership. I think not responding to a UDRP is bad for a couple of reasons (unless you are advised by a legal professional that not responding would be in your best interest).

First, you don’t have an opportunity to defend your ownership of the domain name. You’re letting the complainant make its case and aren’t able to rebut its complaint. If the submitted evidence is enough for a panelist to make a decision in favor of the complainant, you could lose the case pretty easily.

The second reason may be less obvious but could pose a future threat to your business. Not even considering that a UDRP loss can be used by a future complainant to show bad faith on other domain names, it could also show others that you are a sitting duck. A non-response could encourage other companies to file UDRP cases for other names you own, believing you may not defend your rights to own other domain names, possibly making their chance better.

Whether you decide to hire a lawyer or not is your decision to make based on the strength of your case, value of your domain names, and/or financial situation, but I don’t think not responding is for the best (unless under the advice of an attorney, which I’ve heard about). If you don’t care enough about your domain name to defend it, perhaps you can just give the name to the company to get them to withdraw the UDRP.