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"Finders Keepers" is not a legitimate defense to a cybersquatting claim

World Wide Commerce Corporation (“WWC”) registered its domain name, eleven years ago. Unfortunately, the registration inadvertently lapsed.

A domain vulture immediately snapped it up and offered it up for sale. The asking price appeared to be in excess of $50,000. Naturally, WWC filed a UDRP proceeding. As a panelist, they pulled Professor Darryl C. Wilson of Stetson University. Normally, when I see an academic panelist, I presume that the Complainant will lose. Academic panelists, for the most part, would believe that the tooth fairy is real if a respondent said so.

In World Wide Commerce Corporation v. WebContents, Inc., Claim Number: FA0712001124467, Professor Wilson kicked that stereotype in the teeth.

The respondent made the following argument:

Respondent contends that Complainant has no common law rights in the mark WORLD WIDE COMMERCE and that since Complainant “…has failed to establish secondary meaning of the catchphrase ‘Worldwide Commerce,’ the Respondent has as much right as the Complainant to continue ownership of the domain name going forward.” Respondent also states that its intention was to use the domain name for use in future business endeavors, that it is currently using the domain name for legitimate purposes, and that it is not currently nor did it in the past register and use the disputed domain name in bad faith. Respondent further notes, “There is an element of ‘Finders Keepers, Losers Weepers’ in this decision. We believe that is as it should be.”

With respect to the complainant’s common law rights, the respondent was arguably correct. I doubt that the complainant could convince a trademark examiner that the highly descriptive term, “World Wide Commerce” had developed secondary meaning sufficient to register the mark. Nevertheless, Wilson applied the UDRP properly. Perhaps these rights were weak, but Wilson properly held that the rights were sufficient to make out a prima facie case.

Complainant has made continuous use of the mark in commerce for more than eleven years, conducting business under the mark in connection with its web and telecommunication services. Complainant registered the “World Wide Commerce Corporation” name with the Colorado Secretary of State, registered and previously used the domain name before the registration lapsed, and purportedly generated revenues in excess of $5.3 million, while serving a long list of global clients. Complainant’s President contends in an affidavit that Complainant has spent significant time and money in generating substantial goodwill and consumer recognition in the WORLD WIDE COMMERCE mark.

Much better than that, Wilson explicitly recognized that snapping up an inadvertently dropped domain name creates both a lack of legitimate rights on the part of the respondent and that it is evidence of bad faith registration and use.

While it is clearly recognized that anyone has the right to purchase and make immediate or planned use of an available, non-confusing domain name that is legitimately offered for sale, Respondent registered the Domain Name after Complainant had inadvertently allowed the Domain Name to lapse, subsequent to eleven years of continuous use in commerce. Registration of a domain name under these circumstances is evidence of a lack of legitimate rights or interests in a domain name. See, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb 28, 2005) (finding that “[t]he fact that Complainant had previously held the domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “infra dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (holding that complainant’s prior registration of the domain name was a factor in considering rights and legitimate interests in the domain name).

What I really love is how the Panel slapped the respondent with his own “finders keepers” language.

Complainant’s previous registration and use of the disputed domain name before the registration inadvertently lapsed coupled with Respondent’s immediate registration and refusal to transfer further supports that Respondent’s registration and use of the domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).

While “finders, keepers-losers, weepers” is a quaint and classic saying it is also an oversimplification of the underlying law. Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor. WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must “tear” itself away from the disputed domain name.

Thank you Professor Wilson for both giving us a good decision and for burnishing the tarnished image of the gullible (or simply greedy) academic UDRP panelist.

For a contrary, and clearly idiotically-reasoned decision, see Canned Foods, Inc. v Ult. Search Inc., Claim Number: FA0012000096320.

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