By Steve Levy
I’ve sent many thousands of demand letters to domain name cybersquatters over the years and have filed many hundreds of UDRP complaints when the demand letter didn’t bring results. Many times, though, the letter would elicit a response that included an offer to sell the domain name. As you would expect, these were viewed with great skepticism by the aggrieved brand owner since no one wants to encourage this sort of bad behavior (ask us about how we mitigate recurring transgressions by cybersquatters we deal with).
In some cases, the philosophy was “we don’t negotiate with cybersquatters and we need to make an example through aggressive enforcement.” But more often, the approach was one of pragmatism and expediency, and a modest price of a couple of hundred dollars was arrived at resulting in the domain name being transferred in a matter of days.
While the hardball approach is sometimes necessary, it has its limits and this was on full display in a recent UDRP decision, on which I was one of a three-member panel, involving the domain name ovenly.com. The Complainant, a bakery and café in New York City, owns the trademark OVENLY. The Respondent bid on and won the disputed domain name for $709 in February of 2024 through an auction of expired domains. It then listed the domain name for sale on GoDaddy at a price of $9,999. The Complainant attempted to buy the disputed domain name anonymously through a GoDaddy broker but the buyer’s identity was never disclosed to the Respondent. After the UDRP complaint was filed, the Respondent reached out to the Complainant to resolve the matter and offered to transfer the domain name for its acquisition cost of $709. Having already spent money on the UDRP, the Complainant did not accept that offer and apparently offered $100 which the Respondent declined. The Panel dismissed the case noting that many other companies use the word “Ovenly” so there was no evidence that the Respondent was specifically targeting the New York City Complainant when it acquired the domain name.
While contacting domain owners directly has become very difficult due to the excessive use of WHOIS privacy shields by registrars, had these two been able to come together initially, the Complainant could have saved a lot of money and acquired the domain name at a very reasonable price. Even after it had spent some money on the UDRP complaint (it was self-represented and didn’t hire a lawyer), it could have obtained the domain name for $709. I can only imagine that, now, the Respondent has been emboldened by its UDRP victory, and perhaps irritated by having to incur its own legal defense costs, resulting in the price of the domain name going right back to $9,999 or even way beyond.
So sometimes discretion is the better part of valor and paying a cybersquatter a nominal amount can get you a quick and certain result. But if you need to bring out the big guns, the UDRP is still there as a fallback.