Trade Me loses WIPO attempt to win control of Trademe.com
New Zealand’s biggest ecommerce company, Trade Me, has failed in an attempt to win control of the domain name - trademe.com - at the World Intellectual Property Organisation (WIPO).
And industry experts are suggesting the company could be forced to pay handsomely, perhaps as much as $1million, if it really wants the name.
That’s because the owner, Kevin Ham from Vertical Axis Inc. is a well-known US domainer, who has precious little history of
selling names and, indeed, a magazine article once titled a story about him – “The man who owns the Internet”.
News of the decision emerged recently via WIPO’s domain name dispute resolution service, known as the
Uniform Domain Name Dispute Resolution Policy and Rules (URDP).
Details of the decision can be found online at the web-site of eminent Australian lawyer, Phil Argy,
who headed up the three man WIPO panel which reviewed Trade Me’s claim.
The detailed judgment shows that Ham first registered the domain name TradeMe.com back in 2001, when the NZ business was comparatively tiny.
Today, of course, Trade Me is the giant of NZ ecommerce, with a claimed 2.1 million members, and a business so successful that
Australian listed media company, Fairfax, paid more than $A600 million to buy it back in 2006.
Since that time it has continued to prosper and last year kicked some $70million into Fairfax’s coffers.
But trading under the domain name trademe.co.nz has its limits, and having control of the domain trademe.com would clearly
break right through those limits, giving the company international expansion options and a potential global reach.
So earlier this year Trade Me notified WIPO of a dispute and sought arbitration on its claim that the original registration
of the name back in 2001 was done in bad faith, and in the full knowledge of the existence of the NZ company.
However the three man panel found the evidence didn’t stack up, and denied Trade Me’s claim.
Trade Me’s lawyer, Christine Lanham, told eCommerce Report that there was no appeal open to the company under WIPO rules.
She said that the company was considering its options, and that the two main options were to either take action against
Vertical Axis under trademark law, or to make an offer to buy the name.
And seeing as Trade Me didn’t file its trademark application until 2003, some 2 years after the dot.com name was first registered,
it is doubtful a trademark case would be successful.
So the only way the company is likely to get control of the name is to offer to buy it.
But what should it offer. Or, in other words, how much is it worth.
Rod Keys, owner of the domain name after- market for Australian domain names at www.domainmarketplace.com.au said that valuations
for US and local domains were very different.
“But it would have to be worth at least $US100,000, if not hundreds of thousands” he said.
Richard Moore, CEO of Australian Stock Exchange listed domain name company, Dark Blue Sea, also thought that the facts of the case
suggested a high valuation.
“If you type the name into the automated valuer service at www.espibot.com, you get $US69,000 so that’s one indicator.”
But Moore said beyond that it was very difficult to estimate what the name is worth.
“It really depends on the particular circumstances and how effective they are as negotiators … In some cases the name is even just
handed-over, whilst in others, a very substantial sum is paid.”
For more information go to:
www.wipo.com
www.argystar.com
www.trademe.com
www.trademe.co.nz
www.estibot.com
www.domainmarketplace.com.au
www.darkbluesea.com.au
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