By Doug Isenberg
If you have fond (well, perhaps, any) memories of the original dot-com boom (and bust), circa 1997-2001, you might enjoy this UDRP case: a decision involving the domain name <kozmo.com>.
Created on April 2, 1997, the <kozmo.com> domain name was used by a company called Kozmo.com, Inc., in connection with free online ordering and one-hour delivery of such products as "videos, games, dvds, music, mags, books, food, basics & more." The company filed for a $150 million initial public offering in March 2000. Thirteen months later, it went out of business -- in what Businessweek at the time described (in an article titled "What Led to Kozmo's Final Delivery") as a "path from stardom to the dot-com dustbin [that] is symbolic of the end of the Internet boom."
Eleven years later, a UDRP dispute over <kozmo.com> shows that "the history of the Disputed Domain Name remains unclear," as the UDRP panelist wrote.
The UDRP complaint was filed by Yummy Foods, LLC, of Los Angeles (the "Complainant"), which owns two federal trademark registrations in the United States for the mark KOZMO for use in connection with retail store and delivery services. For obvious reasons, Yummy Foods wanted to acquire the <kozmo.com> domain name, but apparently the domain name remained registered to Kozmo.com, Inc. (the "Respondent"), even though that company no longer existed. And, curiously, according to the UDRP decision, renewal of the domain name was "in arrears 7 years." (My review of the current Whois record shows that the domain name was set to expire on April 3, 2011.)
Despite the oddities of this case, the panelist wrote that the UDRP "was not designed as a tool for obtaining domain names from defunct corporations." And, the panelist refused to transfer the domain name to Yummy Foods, due to a lack of the essential "bad faith" element required in every successful UDRP proceeding:
Respondent could not have known of Complainant’s mark when it registered the Disputed Domain Name. In fact, as Complainant has repeatedly emphasized, Respondent ceased to exist almost ten years before Complainant began operations under the KOZMO mark. Furthermore, during its time in operation Respondent had a United States trademark for the Disputed Domain Name and offered bona fide goods and services through the Disputed Domain Name. Accordingly, Respondent did not register the Disputed Domain Name in bad faith. Lastly, the Disputed Domain Name has been in locked status without reverting to any active website since 2005. These facts demonstrate that Respondent’s conduct does not qualify as bad faith under paragraph 4(b) of the Policy.
While this decision is solid, it leaves a number of questions unanswered, such as:
- Should domain name registrars be permitted to maintain registrations of domain names registered to defunct (or non-existent) entities, especially when they are made aware of this status? (Of course, domain name registrations using fictitious names have been a common cybersquatting problem for years; I have personally filed UDRP complaints against registrants identified as "Barack Hussein Obama Jr" and "Sdf fdgg.")
- What can (or should) a "dying" entity do with its domain names, especially if they might have independent value?
- Who, if anyone, has the right to control a domain name previously used by a now-defunct corporation?
- Why would a domain name registrar maintain a domain name if its renewal was in arrears seven years, and should this even be allowed?
