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Vondran Legal® Prevails in WIPO Domain Dispute

Posted by Steve Vondran | Nov 15, 2021 | 0 Comments

UDRP Law - Domain Name Disputes - World Intellectual Property Organization ("WIPO")

WATCH ATTORNEY STEVE® EXPLAIN THE FINAL DECISION - VONDRAN LEGAL® PREVAILS OVER BITTORRENT COMPETITOR!!  You can't make this stuff up!  Read all about it!!!

picture of two eggs

VIDEO:  Click here to listen to the decision of the three member domain dispute arbitration panel which set the record straight as to what one of our BitTorrent Strike 3 Competitors was attempting to do.  MAKE SURE TO SUBSCRIBE TO OUR FREE LEGAL YOUTUBE CHANNEL.  WE BREAK DOWN THE LEGAL SYSTEM AND PROCESS SO THE AVERAGE PERSON CAN UNDERSTAND IT.   We are now over 32,000 subscribers and over 3.5 million video views.

FOR MEDIA INQUIRIES CONTACT US AT (877) 276-5084

2021 Intellectual Property News Update. The Law Offices of Steven C. Vondran, P.C. (“Vondran Legal®”), a San Francisco based IP and technology law firm, recently prevailed against a BitTorrent file-sharing defense competitor (The Law Offices of Jeffrey J. Antonelli – “Antonelli Firm” from Illinois) who sought to obtain the domain name “TorrentDefenders.com” through a UDRP domain dispute administrative proceeding. The domain proceeding was brought through the World Intellectual Property Organization arbitration and mediation center. See WIPO Case No. D2021-2428. The Court of Record is The WIPO Arbitration and Mediation Center in Geneva, Switzerland. Located at 34, chemin des Colombettes, 1211 Geneva 20, Switzerland.

The Antonelli Firm hired legal counsel to file the complaint (Mr. Tristan Robinson, of the Weaver-Robinson law firm in Texas). A three-member arbitration panel denied the relief sought by Complainant and did not allow the Antonelli Firm to take final possession of the domain.

In reaching its decision, the panel noted:

“The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable.”

At this time, Vondran Legal® is reviewing their legal options. According to Attorney Steve Vondran:

“We are considering how to respond to this blatant over-reach an attempt to obtain one of my valuable domain names. I advised these parties multiple times that there was no factual basis for their legal filing, and that I would have to incur legal fees to defend, but they proceeded anyway.  Now, the ball is in my Court.  No one should be filing a UDRP domain name dispute unless they are sure they have the evidence to prevail on each of the required three elements.  When this doesn't happen, you can expect decisions like this."

Vondran Legal® was recently identified by Unicourt.com as the Top Copyright Infringement Defense Law Firm in the United States (in regard to the number of cases handled) for the year 2020. We are on pace to repeat again in 2021..

Follow us at AttorneySteveVideos.com and join over 32,000 subscribers who watch our very important legal YouTube channel. Vondran Legal® has handled and defended more individuals accused of illegal file-sharing of Strike 3 Holdings, LLC copyrighted adult pornographic movies in the State of California (including in the Southern, Northern, Eastern and Central District) than any other law firm in 2020.

General overview of the WIPO domain dispute process

In this case, out of the blue I received an email notice informing me that there was a domain name dispute filed against my firm for the domain name described in the video.  This means, they initiated a legal proceeding seeking to have my domain name transferred to their law firm.  Keep in mind, there were no previous letters sent to me accusing me of being a "cybersquatter" a "typo-squatter" or anything like that.  Just a UDRP action filed for all the world to see.  This comes as quite a shock when you try to run your business fairly and competitively.

At any rate, I made the decision to hire a three-panel mediation panel which costs $1,500 through WIPO.  So, I was out of pocket for this, and out of pocket for attorney fees.   Later, you get a list of panel members to choose from and each side gets to choose names and ultimately a panel is chosen.  

The Parties submit their claims and defenses and the Complainant (Antonelli Firm) must be prepared to prove all three elements required to be proven in a domain dispute proceeding.  These elements are:

  1. The Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The opposing party has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

Once you get the complaint, a respondent needs to respond to the Complaint.

The Complaint

Here is what the Mr. Tristan Robinson, of the Tristan-Weaver law firm filed.  NOTE:  he later sough to file "supplemental" pleadings with the panel, but they do not have to hear or review this.  In fact, it appears it was given little, if any weight.  This is why it is important to give it your best shot in the original complaint especially when you are trying to obtain a competitors domain name.

Tristan Robinson WIPO UDRP Complaint.pdf
Complaint filed by Attorney Tristan Robinson of Texas

Our response

After making several written attempts to talk Mr. Robinson into withdrawing his ill-advised complaint, he nevertheless indicated he would going forward.  That be the case, I was obligated to respond within a certain time frame.  We did respond and here is what we filed in response.

Vondran Legal UDRP Response vs Antonelli FIrm.pdf
Vondran WIPO Domain Dispute Response

 

Vondran WIPO UDRP Response Exhibits.pdf
WIPO Domain Dispute Vondran Response Exhibits

 

The Decision

You can watch the full decision above.  Here is the relevant part, at least to me, who got called out for doing nothing wrong.  As you can see, the majority of the WIPO arbitration panel hit pretty hard in denying the relief sought.

 

text of UDRP WIPO decision

UDRP Domain Dispute Lesson of the Day

If you obtained a federally registered trademark AFTER someone already had a domain name, it would be extremely wise to seek out the services of an EXPERIENCED DOMAIN DISPUTE ATTORNEY to help you and MAKE SURE YOU CAN MEET ALL THE ELEMENTS BEFORE YOU FILE A COMPLAINT.  If you determine, in good faith, that you can meet the three evidentiary burdens listed above AND HAVE ACTUAL EVIDENCE TO POINT TO, then and only then should you consider filing a domain name dispute.

Our Trademark and UDRP Services

If you find yourself in a similar situation, we can help with the following legal services:

  1. Filing WIPO or NAF Complaints and Responses
  2. Trademark registration
  3. UDRP Domain Dispute legal counsel
  4. Reverse Domain Name Hijacking cases
  5. Cybersquatting
  6. Typosqautting
  7. ACPA cases (Anti-Cybersquatting Consumer Protection Act)
  8. Selling a website including domain (internet business lawyer)
  9. Trademark cancellation proceedings
  10. Federal trademark litigation

Call us at the number below for more information.

What is the ACPA?

According to Wikipedia:

"The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub.L. 106–113 (text) (pdf)) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.[1][2] The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party."

Top Domain Name Resources

Here are some top resources if you are interested in domain names, and domain name disputes.

1. GoDaddy.com (my favorite place to buy domains)

2. WIPO mediation and arbitration center 

3. National Arbitration Forum

4.  Video: Attorney Steve overview of UDRP domain disputes

5. DN Academy

6. Domain Name Journal

7. Domain Sherpa

8. Domain Wire

9. Domaining.com

10. Trademark Trial and Appeals Board

Contact a Domain Dispute Lawyer

If you need help with a UDRP domain dispute or trademark matter (either as a Complainant or Responding Party), call us at (877) 276-5084 or send us an email through our contact form.  We can help you review your case, analyze potential legal arguments, responding to legal cease and desist demand letters, and represent you or your company in a WIPO proceeding or proceeding through National Arbitration Forum or other arbitration or mediation proceeding.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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