BOCA RATON, Fla., April 9, 2012 /PRNewswire/ -- Are United States citizens and companies that use the famous dot-com extension, as most U.S.-based companies do, now a target of foreign companies that want your valuable domain or your business? That question, according to Rick Schwartz of eRealEstate.com of Boca Raton, Florida who owns SaveMe.com, sets the tone of a pending cyberwar at the World Intellectual Property Organization. Other online investors such as Paul J. Kapchuck agree that the stakes are high as a showdown looms.
A pair of Brazilian companies (Online Services, Ltd. and E-Commerce Media Group Information and Technology, Ltd.) owns the domain SaveMe.com.br (the .com.br extension is reserved specifically for Brazil) that they registered in 2010 and started using in 2011. On March 13th, these companies filed a complaint with World Intellectual Property Organization (WIPO) against Schwartz. Schwartz asserts that the pair is hoping to grab the very valuable dot-com version of that domain. SaveMe.com was registered by Schwartz in 1996 and SaveMe.com.br wasn't registered until 2010.
Both Schwartz and Web Developer Danny Pryor, as well as established trademark attorney Howard Neu, agree the present case is an effort to use Internet administrative procedure to seize a generic domain name that was registered 15 years before the Brazilian companies were ever in business. The Brazilian companies even noted in their complaint that they had not even secured a trademark, blaming the Brazilian Government for dragging its feet. The companies state, in their complaint, no trademark can be granted because of "Brazil Trademark Office's enormous backlog in analyzing trademark applications."
While WIPO rejected the original complaint last month, citing "deficient" arguments, an updated version of the complaint was re-filed on March 24, after WIPO sent the case back to the filers for modifications. Among the deficiencies observed by WIPO, the most notable was that the original complaint had not fully explained how bad faith allegations applied in this case.
WIPO comments to the complaining parties are viewed as a slant in favor of the complainant, by at least one attorney's account. Paul Keating, a world-renowned Internet Attorney, specifically observed on this guest blog post that WIPO provided the complainant in the SaveMe.com UDRP case, "a second bite at the apple, because they are being advised to review and correct substantive issues pertaining to their burden of proof."
WIPO, on the other hand, will not provide Mr. Schwartz with a second bite of the apple if he fails in his efforts to defend his domain of 16 years, Neu observed, calling the arbitration setting an uneven playing field. "Schwartz will be forced to file a new action in U.S. Federal Court for relief," Neu said. Howard Neu represents Schwartz in the WIPO case and has been his attorney since 1999.
"This is a perfect example of 'Reverse Domain Hijacking,'" Schwartz said. "A party, with no rights whatsoever, tries to bully folks into giving up their domain name, and the domain name owner in many cases can't afford to defend his property. That defense often costs many thousands of dollars. The Brazilian Complainants must show that in 1996, I registered the name in 'Bad Faith' and somehow knew a company half a world away would use that name 16 years later."
Schwartz added, "We are determined to let folks who may own valuable dot-com real estate know what is to come, as a bad decision here could have a huge impact on online business. In fact, it could make U.S. businesses much more vulnerable, because we rely on dot-com for our online presence and commerce, as opposed to other extensions or country codes."
The Brazilian companies have asked WIPO for a three-member arbitration panel, composed entirely of Brazilian nationals. There is no date currently set for the arbitration hearing.
Press Contact: Howard Neu, [email protected], 954-662-1816