UDRP on FreedomChurch.org – Another Victory!

Hello everyone!

This was the 6th UDRP filed on one of our domains FreedomChurch.org at NAF and was represented by John Berryhill. The last 3 UDRP wins came in the shape of Kitchn.com, PrintFactory.com and AguaDulce.com.

I wanted to thank Mr. John for representing in this case as well as his guidance throughout the case was helpful and encouraging.

This culprit complainant just got saved from getting labelled as Reverse Domain Name Hijacker because only 1 out of 3 panel members considered the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Below is the entire decision from NAF:

Peymon Mottahedeh v. AbdulBasit Makrani

Claim Number: FA2010001918379

PARTIES

Complainant is Peymon Mottahedeh (“Complainant”), represented by Peymon Mottahedeh, Florida, USA.  Respondent is AbdulBasit Makrani (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freedomchurch.org>, registered with GoDaddy Online Services Cayman Islands Ltd.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Darryl C. Wilson, David E. Sorkin and Dennis A. Foster (Chair) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 26, 2020; the Forum received payment on October 26, 2020.

On November 3, 2020, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the <freedomchurch.org> domain name is registered with GoDaddy Online Services Cayman Islands Ltd., and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and Rules (the “Rules”).

On November 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@freedomchurch.org.  Also on November 4, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on November 30, 2020.

On December 7, 2020, an Additional Submission from Complainant was received.  The Panel finds that such Additional Submission complies with the Forum’s Supplemental Rule 7 and was considered in the Panel’s decision.  On December 8, 2020, an Additional Submission from Respondent was received.  The Panel finds that that Additional Submission complies with the Forum’s Supplemental Rule 7 and was considered in the Panel’s decision.

On December 8, 2020, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Darryl C. Wilson, David E. Sorkin and Dennis A. Foster (Chair) as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

– Complainant is a speaker and founder of “Freedom Church,” which was formed to “communicate with and inform members and other interested truth seekers, and to help new members join the church.”

– Complainant has used the FREEDOM CHURCH service mark in rendering services since 1997.  Complainant registered that mark with the state of Florida.

– Complainant also registered and used the disputed domain name, <freedomchurch.org>, since 1997.  Complainant mistakenly allowed his registration of that name to expire in 2020.  Respondent then registered the name.

– The disputeddomain name is identical to Complainant’s mark as it incorporates the mark in its entirety and merely adds the “.org” generic top-level domain.

– The Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not using the disputed domain name to organize a church for the purposes of freedom.  Respondent does not use the disputeddomain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.

– Respondent registered and uses the disputeddomain name in bad faith.  Respondent offers the disputed domain name for sale at a much higher price than that for which it was purchased.  Respondent registered the disputed domain name in opportunistic bad faith after Complainant accidentally allowed its registration of the name to expire.

B. Respondent

– Respondent is a buyer and reseller of generic domain names, a legitimate business.

– Complainant fails to demonstrate rights in the FREEDOM CHURCH service mark. Complainant’s registration of that mark in the state of Florida took place after Respondent lawfully bought the disputed domain name.  Furthermore, registration with a state authority does not establish rights in a mark.

– Complainant has failed to demonstrate common law rights in the FREEDOM CHURCH service mark.  Many other entities throughout the United States make use of that and very similar marks.  None, including Complainant, can claim a secondary meaning with respect to said mark.

– Further investigation reveals the extent to which any “Freedom Church” run by Complainant is a thinly veiled criminal conspiracy to promote tax evasion and outlandish theories.

– Respondent’s purchase and general offer to resell the disputeddomain name is a bona fide offering of goods or services, as Respondent is a reseller of generic domain names. The disputed domain name is comprised of generic terms to which Complainant does not have a monopoly.  Additionally, the registration with the Florida authority explicitly notes that the terms of Complainant’s claimed mark are generic

– Respondent did not register and does not use the disputed domain name in bad faith.  Respondent’s business as a reseller of generic domain names is not a bad faith use.  There is no way Respondent could have known of Complainant at all, given the generic nature of the terms in the disputed domain name, and Complainant did not register his claimed service mark with Florida until after Respondent purchased the disputed domain name.

C. Complainant’s Additional Submission

– Complainant does not dispute the general legitimacy of Respondent’s business model, which is to profit handsomely from buying and selling recently expired domain name registrations that consist of generic terms.

– Complainant’s Florida registration for the FREEDOM CHURCH service mark should be deemed evidence of Complainant’s valid ownership of the mark.  Respondent has misconstrued UDRP cases that question service mark registrations issued by individual states.  In any case, Complainant has valid common law rights in its service mark, due to continuous use since 1996 and the lack of challenge of those rights by any other church that incorporates that mark in its name.

– Respondent is not commonly known as the disputed domain name, as well as neither using the name in connection with a bona fide offering of goods or services nor using it for legitimate noncommercial or fair use purposes.

– Respondent’s offer to sell the disputed domain name to Complainant, or its competitors, for nearly US$30,000 is evidence of Respondent’s bad faith conduct.

D. Respondent’s Additional Submission

– Complainant has misinterpreted prior UDRP cases that involve mere state service mark registrations.  Those cases do not confirm those registrations as conclusive evidence of service mark ownership for Policy ¶ 4(a)(i) purposes.

– Complainant has not shown the distinctiveness and secondary meaning necessary to achieve common law rights in the FREEDOM CHURCH service mark.  Simply possessing an unchanged web page at the disputed domain name for a number of years is insufficient evidence.  Complainant offers no hard evidence of advertising expenditures, customer volume or public recognition regarding its use of the mark.  Moreover, Complainant acknowledges that use of the mark, or variations thereof, is neither exclusive to nor distinctive of Complainant.

– Respondent’s offer to sell the disputed domain name is not evidence of bad faith, but instead falls within Respondent’s good faith business actions.

FINDINGS

Complainant is a speaker and founder of the Freedom Church, through which he has rendered spiritual and taxation-related advice since 1996.  In furtherance of his efforts, Complainant registered the disputed domain name, <freedomchurch.org>, on Feb. 28, 1997, but allowed that registration to lapse as of Feb. 28, 2020.  He registered the FREEDOM CHURCH service mark with the state of Florida on Oct. 16, 2020 (Reg. No. T20000001168).

Respondent is the current owner of the disputed domain name, which he acquired on March 1, 2020.  Respondent is currently offering the disputed domain name for sale at a price of approximately US$30,000.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)  The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent 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.

Identical and/or Confusingly Similar

As Complainant had owned and rendered services under the disputed domain name, <freedomchurch.org>, for 23 years prior to Respondent’s registration of that name, the Panel can see clearly that the name is identical to the Complainant’s claimed FREEDOM CHURCH service mark.

However, under Policy ¶ 4(a)(i), Complainant must also establish that he owns rights to a FREEDOM CHURCH service mark.  To that end, Complainant has submitted a mark registration document issued by the state of Florida.  But, because such registrations are not subjected to the rigorous examinations required under the United States Patent and Trademark Office, or other national or regional trademark authorities throughout the world, prior Policy panels have not generally recognized state issued mark registrations as probative of mark ownership. The Panel agrees with that reasoning and determines that Complainant’s Florida registration is insufficient to sustain Complainant’s claim to rights in a FREEDOM CHURCH service mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.2 (“When considering UDRP standing, panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations (as opposed to US federal registrations); these are not accorded the same deference and may not on their own satisfy the UDRP’s “rights in a mark” standing test.”); see also Elan, LLC v. Al Perkins, FA 1731999 (Forum June 26, 2017) (“…registration of a trade name with a State is insufficient to establish trademark rights.”); see also PK Information Systems v. Kevin Kurpe, FA 1835258 (Forum May 13, 2019) (“As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds.  In particular […] the Florida Department of State […] will typically issue the registration as long as there are no identical registrations on the State registry.”).

Failing to sustain a finding of service mark rights by virtue of sufficient registration, Complainant might successfully assert that he possesses common law rights in the FREEDOM CHURCH service mark.  However, to do so, Complainant would have to provide the Panel with evidence that the mark has become a distinctive identifier of his services, so that the mark takes on a “secondary meaning” relative to Complainant.  Beyond the duration and nature of use regarding the service mark, other pertinent evidence supplied by Complainant might convincingly address: volume of sales; spending on and extent of advertising; actual public recognition; and perhaps consumer surveys.  See WIPO Overview 3.0, section 1.3.

With respect to the burden placed on Complainant to establish common law rights in the FREEDOM CHURCH service mark, the Panel finds that the Complaint and Complainant’s Additional Submission furnish scant evidence on which to base those rights.  The Panel notes relatively long use, 23 years, in the form of Complainant’s continuous registration of the disputed domain name, but little else.  Complainant has provided only a simple display of a webpage attached to the name, without mention of connected revenues, advertising expenditure, consumer or media recognition or any kind of published surveys.  In analyzing this lack of evidence, the Panel also recognizes that, because the claimed service mark is composed of two generic terms, “freedom” and “church,” said complementary evidence is all the more important.  See WIPO Overview 3.0, section 1.3 (“In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”).

Therefore, given the generic nature of the claimed FREEDOM CHURCH mark, the Panel must determine that Complainant’s submission of evidence, which only confirms the duration of its use within a domain name connected to a simple webpage, is insufficient to sustain a finding of common law rights in that mark. See Thermo Holdings, LLC v. Park KyeongSook, FA 1608001690428 (Forum Sept. 25, 2016) (finding that evidence of a date of first use of a mark is insufficient to establish rights therein).

Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests and Registration and Use in Bad Faith

As Complainant has failed with respect to the first element required under the Policy, the Panel need not consider the second and third elements a Complainant must prove under the Policy.

Reverse Domain Name Hijacking

The Respondent has asked that the Panel find that the Complainant has engaged in Reverse Domain Name Hijacking because the Respondent should have known that he had no trademark rights in the disputed domain name <freedomchurch.org>. However, the Panel majority finds that since the Complainant owned the disputed domain from 1997 until 2020, it was by no means obvious that the Complainant would not have been able to create trademark rights in the domain name during that lengthy time period.  In addition, as the Complainant lost the domain name through inadvertent nonpayment, it is not unreasonable, in bad faith or for harassment (per Rule 15e) if the Complainant attempts to regain ownership of the domain name through a UDRP proceeding.

Panelist Sorkin would find that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding. Complainant knew or should have known that he could not demonstrate the requisite trademark rights, his prior ownership of the corresponding domain name notwithstanding. While Complainant is self-represented in this proceeding, he is an experienced pro se litigant and the president of an unaccredited law school, and he holds himself out as an expert on tax law and ethical matters. His pro se state trademark application was filed in October 2020, apparently in preparation for this proceeding, and it does not appear that Complainant ever asserted any trademark rights whatsoever prior to Respondent’s acquisition of the disputed domain name.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <freedomchurch.org> domain name REMAIN WITH Respondent.

Darryl C. Wilson, Panelist

David E. Sorkin, Panelist

Dennis A. Foster, ChairDated:  December 21, 2020

I wanted to convey a message to all people around the world, I will try my best to defend my properties and won’t let them go easily. Anyone planning to file a complaint against any of my domain in future, just remember that it’s not really easy to snatch any of my domain. Better to buy the domain in a proper manner through proper channels, else get ready for the hard consequences.

Any feedback is welcome.

From $500 purchase to a $19,888 sale in 5 days!

Hello everyone,

There have been several instances where the loyal readers of this blog have expressed dissatisfaction and/or requested to share the purchase price when I publish my domain sales or acquisitions. I usually don’t mention the exact price but sometimes I give out the price range I had paid for the domains.

So today I’ve decided to share the complete detail from purchase price to the sales price. Well, I acquired TruthTeller.com privately on 8th October 2020 for $500. I put up $19,888 BIN and Floor price at Afternic and on 13th October 2020, I received an email informing me about the domain getting sold via Fast Transfer for $19,888.

By the way, it’s really not easy to acquire domains privately. It takes a lot of research, time and patience to get some good deals. Recently I’ve been doing some private acquisitions which I plan to share soon once everything is sorted out. Right now I’m in the middle of completing the deal. It all started in April 2020 and is still ongoing…

On the other hand, my fastest sale to date remains the same – Textbooks.CO which I sold in 24 hours back in 2013 via outbound marketing.

I’m glad that my second fastest sale also happened to be in the 5 figures range.

Feel free to give your feedback on this sale and/or share your fastest sales to date.

Beware of this new scam trick

Hi everyone,

I wanted to make you all aware of this new scam trick. I believe some have received similar emails as well but still I wanted to share it for everyone else who’s not known to it.

Today morning I received an email with the following details:



Subject: Domain Inquiry

Email address: brian.holloway@lntellectualventures.com

Message:
Hello,

I am inquiring about your domain name Paymet.com

We are interested in purchasing the domain name for a new project. Our offer is $550,000.

Please let us know if you are willing to sell the aforementioned domain name to our company for the above price.
We await your reply at your earliest convenience.


Sincerely
Brian Holloway
Head of the Deep Science Fund
Intellectual Ventures
https://www.intellectualventures.com/who-we-are/meet-iv/brian-holloway



If you carefully look at the email address which actually has the letter L and not letter I for Intellectual keyword. This is a clear disguise way to lure into the trap of buying appraisal certificates.

Another thing is that the domain Paymet.com is listed for sale at $29,888 whereas the initial offer came in at $550,000. That’s clear cut stupidity by offering so high. Even to cheat others, one has to use their brains and in this case the only thing intelligently used was the domain name.

For anyone who doesn’t usually get too excited at first by looking at such high starting offers, they cannot be easily trapped.

Also to note, the person and company name used above (Brian Holloway and intellectualventures) is real and can be checked at the above link mentioned in the message AND have no connection with this scam. The scumbag at Lntellectualventures intentionally used their information to disguise domain owners.

Feel free to share this with your fellow friends so they can be made aware of this scam and you better be careful as well.

Some top acquisitions of 2020

Hi everyone,

I’m very excited to share some of my top domain acquisitions of recent time. My last post on acquisition was in March 2020.

Today I’ll start once again by sharing another 3L domain FLM.com which I recently acquired. This is my 3rd 3L .com domain purchase after GRO.com and EJH.com and I’m very happy with this domain to be added in the portfolio.

QMBS.com, MMDW.com and FOIK.com – As always I’m slowly acquiring 4L .com domains and I like the formula of Shane Cultra of having 7%-10% of 4Ls in a portfolio and I’m having somewhat around 7% of 4Ls in my portfolio as well.

TAQ.org and TAS.org – I’ve purchased a few 3L .orgs to date but so far no success. Though I’m very confident in selling 3L .org in the future.

LEN.CO, HIH.CO, HJS.CO, LiveStreaming.CO, Parkinson.CO, Comms.CO and Agro.CO – I’ve had good success with .CO domains by selling several domains in 4-5 figures. 3L and 1 word domains are good to invest in my opinion. Rarely I’ve invested in 2 word .CO domains like LiveStreaming and maybe I’ve two more domains of 2 word at max.

OnlineCharity.com – For many years, I’ve witnessed that “online” keyword is in constant demand and both these terms together makes it a good domain.

RehabMed.com – Short version of Rehab Medical, Rehab Medicine and even Rehab Media. I like this short one better than all variants. That’s just my opinion. What’s your take?

TheRay.com and TheToken.com – Domains with “the” keyword works very well and lately the prices are skyrocketing unlike in the past where we could buy such domains for a reasonable amount.

EmilyJane.com – This domain has a very interesting story. I sold this domain previously in 2013 for $5,165. Recently I checked this domain was not resolving to the page which it used to be in the past. I contacted the previous owner but they didn’t own it anymore. I found this domain was under brokerage of GritBrokerage so I had to get in touch with them to buy it. Thanks to Brian Harbin of GB for making the deal smooth and all ended well.

Vivante.com, WildThyme.com, EcoSun.com, FirstServe.com, RainbowCrystal.com, WireFree.com, EliteAgency.com and ArtWood.com – These are the types of domains I really like to invest in. With current hot auction prices, I’m now focusing more on private acquisitions and these are not easy to acquire both in terms of negotiation as well as prices.

Architeck.com – Another example of one word brandable domain.

PowerOfYes.com – Although it’s a 3 word domain but I believe it’s a good domain with positive meaning attached to it.

LeveragedFinance.com – Already have a very few finance related domains so this one was a nice little addition to the portfolio.

Torben.com – Quite a popular name as per LinkedIn which shows 19,000 people.

Labio.com – It means “lip” in Spanish language. Also it’s a 5L, pronounceable and highly brandable domain. Not only this domain can be used for lip surgeries, cosmetics, etc. But it can be used for other different purposes due to it’s catchy brand.

GlobalCrypto.com – A domain selling in 6 figures in the future 😉

Many of those domain acquisitions were private and I regularly use DotDB service for buying domains as it helps in understanding how many potential endusers already exist. So make sure you’re using DotDB and their PRO plan is recommended for which you can get a 7 days trial in case you’re not sure if it’s worth it or not.

Feel free to share your recent acquisitions and/or give your feedback on the domain acquisitions.

Afternic experiment of September 2020

Hi everyone,

Before I start sharing last month’s Afternic results, I would like to inform you that this is the last post of the experiment. The main reason I started sharing with you all was to make aware how Afternic landers are performing for my domains so others can gauge and decide accordingly for their portfolios. I believe I’ve shared enough of this experiment and it’s clear how the overall results are. Just to clarify this decision has nothing to do with this. I already made up my mind right at the start of last month about this decision.

Also I’ve no complaints with Afternic and I’m very happy with the overall results as well as the brokers and my rep. I’ll continue using their landers.

So coming back to the point, this is the 9th and last post of the Afternic experiment series after I published JanuaryFebruaryMarchAprilMayJune, July and August results which I believe you’ll like.

The last month started with the blast and surprise. The first sale happened on the very first day of September in the shape of Aumet.com for $29,888. The buyer came in via Afternic lander. This was one of the interesting sales for me and I’ll tell you why. I received an offer of $17,500 GROSS from Afternic senior sales executive Richard Green on 27th August. He informed me that’s the buyer’s maximum offer. Mind you, that 17.5K offer was not the initial and the broker has already worked upon that lead. I responded back with some explanation as to why I would stick with the BIN and the potential of this domain. On 1st September, I received an email about funds secured by Afternic! The best thing in this deal was that the broker was able to convince the buyer to purchase at BIN with no room for him to negotiate. That was the standout thing for me. So kudos to Richard Green for making this deal to happen and he deserves a big applause for his expertise and professionalism.

One of my friends asked me to share the hold time so let me share it. Aumet.com was acquired more than 1 year back.

The next sale happened on 9th September of NewHold.com for $7,500. Initially we received an offer of $5,000 and after the broker went back and forth with the buyer, they raised up to $6,500. I had set a BIN of $9,888. I requested to push the buyer one last time and see if there is room to revise their offer and finally they presented $7,500 which I gleefully accepted. This one happened with GoDaddy.com. Hold time 1+ year.

Third sale was Shoppery.com which sold for $6,888 and once again via GoDaddy.com. Hold time 5+ years. Then the next one StitchAndSew.com for $1,988 was again via GoDaddy. Hold time less than 1 year.

Finally there was a sale of Cleverr.com which happened via partner registrar which had a BIN of $6,888. Hold time 1+ year.

And then there was a blasting sale and that too happened via partner registrar, The domain is Exicon.com which actually had a BIN of $50,000 but after going back and forth, finally I agreed to sell for $40,000. The interesting thing about this domain is that I had a BIN of $39,888 just 1 month before I received this particular inquiry. I just got a hunch to increase the price of this domain mainly because of the potential of this domain. I’m not sure if this triggered the buyer somehow or what but I was still happy to accept the 40K GROSS. Hold time 2+ years.

Finally there were 3 more domain sales of WayneMedia.com for $2,000 which I had a BIN of $2,988 but I agreed to sell for 2K. This sale was generated via Afternic lander. Hold time 1+ year. The last 2 sales happened via GoDaddy and were SxPro.com for $1,988 and Eudai.com for $1,888. Hold time was 2+ and 3 years respectively.

The sales happened via partner registrars, reminding you that you must keep your domains at a registrar which offers Fast Transfers. That gives an additional exposure to sell your domains.

The number of inquiries for August was almost 550 and the total number of domains at the end of last month just reached 4,300.

Total cost of acquisition was under $6,000 and total amount of sales was $99,028. Though I missed the 100K mark but I’ve no issues. I’m more than happy and hope the sales keep flowing in like the last month not only for me but for all of us so we can prosper altogether 🙂

On the other hand, my friend Muhammad Aamir from DotCorner was happy to share once again his September sales via Afternic which I’ve copied below:

SeoQueen.com for $2,900.
bStores.com for $7,500.

In general, it shows that there will always be ups and downs no matter how big or small a portfolio you’ve. But to get rid of some inconsistency of your sales is to build up your portfolio with a good number of domains along with quality. Having both quality + quantity is the best way to go. I know it takes a lot of hard and smart work, time, dedication, cash flow, etc. And I’m telling you this from my personal experience as well as reviewing fellow investor’s sales and flow.

Thank you Afternic, Richard Green, my relationship manager, the entire brokerage team and everyone involved in making the overall experience so wonderful.

Feel free to share your Afternic sales and/or give your feedback no matter how good or good it is 😉