FreeCreditReport.com Wins 1,017 Domains in Largest Ever UDRP
November 13, 2009
The National Arbitration Forum (NAF) published a historic domain dispute decision late Thursday awarding 1,017 cybersquatting domain names to FreeCreditReport.com. The complaint was filed by ConsumerInfo.com, owner of FreeCreditReport.com, through a process called the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and is believed to be the largest case in the ten years since the UDRP was first enacted. The complete decision is available here.
Interestingly, FreeCreditReport.com was represented in the case by a company called CitizenHawk, Inc., which is not a law firm as would be typical. CitizenHawk and other similar firms such as Alias Encore, Inc. specialize in the automated creation of UDRP complaints using proprietary software, enabling brand holders to enforce their trademark rights at an otherwise infeasible scale.
“The exhibits for this UDRP would have been thousands of pages long, making the case nearly impossible to construct manually,” said Graham MacRobie, CEO of Alias Encore. “Companies have been playing a losing game of Whac-A-Mole with cybersquatters for years, and this case serves as an excellent demonstration of the role automation can play in leveling the playing field by going after huge chunks of infringing names at once.”
Representatives for FreeCreditReport.com and CitizenHawk were not reached for comment.
The disputed domain names were all slight misspellings of FreeCreditReport.com (such as ereecreditreport.com), or they included FreeCreditReport spelled correctly within a longer domain (such as 1-800-freecreditreport.com). The respondent in the case is a firm called Netcorp LLC which had previously lost one other UDRP case in 2005. Unlike that previous case, Netcorp chose this time to represent itself rather than engage the services of a domain industry attorney such as Ari Goldberger or John Berryhill – an interesting and perhaps telling decision considering the complexity of the case.
Further complicating the case was a tussle over the perceived “generic” nature of the brand FreeCreditReport.com. Netcorp argued that “the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark.” Ultimately, NAF’s panelist deferred to the United States Patent and Trademark Office which had previously reviewed and approved FreeCreditReport.com’s trademark application.
It would seem that this decision sets or reinforces a fairly strong precedent that trademark holders may be entitled to, not only to the domain name that exactly matches their trademark, but also to a wide swath of other domain names including nearly every possible misspelling or other variation of that trademark, potentially even if the trademark is comprised of generic words.