Goliath, Dori Media International Loses Battle for Domain — David Beats

Dori Media International called out for Reverse Domain Hijacking by WIPO arbitrator.

Fred McCaw was a bit late to the domain market. Getting started in 1999, he realized all of the good english-language domains were registered. So he registered generic domains in foreign languages, counting his native Filipino. The first domain he registered was Rebelde.com, which means “rebel” in Spanish and Filipino.

Over the holidays McCaw successfully defended a reverse domain hijacking attempt by media firm Dori Media International, which has a spanish language soap opera called “Rebelde”.

I caught up with McCaw by phone this afternoon.

Here’s the saga. McCaw registered Rebelde in 1999 and used it as a free e-mail service for a number of years. He wasn’t making much money with the service and shut it down. He started parking the domain and was surprised by his stats: He made $7,000 in revenue the first month he parked it at Sedo. Surprised, he decided to figure out why he was getting so much traffic.

“I Googled my own domain, at which point I found out why so much traffic was coming,” stated McCaw. The domain was getting traffic from people looking for various entertainment such as soap opera. He decided to reach out to firms that might have been interested in the domain. He contacted EMI Records which has a band called Rebelde. But it wasn’t long ahead of he was notified by Dori Media International that they wanted his domain and were going to take legal action rather than trying to buy it.

Dori Media and its law firm, Keats McFarland & Wilson, LLP, apparently didn’t think it was notable that McCaw registered the domain a number of years ahead of the soap opera debuted. In his written opinion, World Intellectual Property Organization panelist W. Scott Blackmer blasted the firm and the firm for abusing the UDRP process:

The corporate Complainant, represented by reputable intellectual property counsel in Beverly Hills, California, claimed bad-faith registration and use of the Domain Name despite evidence of years of legitimate use and the glaring fact that the Complainant had no trademark rights at the time the Respondent registered the Domain Name in 1999. It is surprising and disappointing that experienced counsel would prosecute a UDRP complaint with such obvious defects, and it suggests overreaching on the part of the Complainant.

Accordingly, the Panel finds that the Complaint represents an attempt at reverse domain name hijacking.

For his part, McCaw stated he’s spent “tens of thousands of dollars” in legal fees defending the domain. He is considering suing for stress and expenses. “It’s a good thing I mad the money from Sedo” since it covered some of the legal expenses, he stated. But he’s still in the red. He also doesn’t understand why a sizable firm wouldn’t want to buy a domain that would send thousands of qualified clients to its doorstep every week.

McCaw plans to monetize the domain again in the future and plans to restart his free e-mail service.