Craigslist, the popular U.S.-based classified host site, recently filed a UDRP complaint against Craig Solomon Online Services over the domain name Craigslists.com. The three-person National Arbitration Forum (NAF) Panel denied the complaint on a number of grounds in a case that should serve as a lesson to all brand owners.
At first glance, the complaint would appear to be an easy victory for Craigslist on the basis of the domain name being confusingly similar to the company’s “Craigslist” mark. The site that Solomon operates appears to be a deviation of a standard pay-per-click (PPC) site, with only a simple introductory header at the top differentiating it from the standard PPC pages we usually see. The aforementioned reasons would give Craigslist a strong case, but a combination of a delay in filing and a clever Respondent resulted in a surprising loss.
Craigslist’s primary mistake was waiting until 2012 to file this UDRP complaint, without any explanation of the delay. Craig Solomon has operated his site since 2003, and while he may have questionable motives (past iterations of the site do a worse job of hiding its PPC roots, as evidenced by the screen shot below), he has maintained this domain for nearly a decade without hearing from the Complainant. Because of this delay, Solomon invoked the laches defense, claiming that he would suffer prejudice if the domain were transferred.
While the delay might have been the primary reason for Craigslist’s loss, Solomon was also able to convince the Panel that his enhanced PPC site is a directory for residents of the Cayman Islands. The Panelists agreed and stated that because he was operating a legitimate site and because his name is Craig, the respondent had rights to the domain and was not engaging in typosquatting, as Craigslist claimed. It seems as if the Respondent opportunistically used his personal name and a very clever twist on the standard PPC website to force the UDRP panelist’s hand.
The most important takeaway from this case is that all organizations, no matter how big or small, should be cognizant of domains similar to their own and, when necessary, take action as quickly as possible. According to FairWinds’ estimates, Craigslists.com pulls over 100,000 visitors a month, a huge number for any site, but especially a glorified PPC site. Craigslist is missing out on visitors who are trying to access its services, but because it waited so long in filing the UDRP complaint, a victory here would have been hard to come by.
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