Canadian company tries using UDRP to get “correct” spelling of its name. Qualify.com was registered more than 10 years before the company was founded.
Qwalify, Inc., a company that services the job recruiter industry, has filed a UDRP (pdf) against the domain name Qualify.com.
And yes, this case is as bad as it sounds. It’s rather comical, really.
Qwalify claims to have started using its brand around 2010. To make the case that the domain name was registered in bad faith, it argues that the domain name was acquired in 2012. That’s when the whois privacy service for the domain name changed.
DomainTools’ historical whois records show a number of different privacy services going back to at least 2005. The reality is the domain name has been owned by the same person since 1999.
Even if you forgive Qwalify for not figuring out that it’s the same owner, the case is still ridiculous. Here’s a company that made up a spelling for a word that is now going after the correct spelling. It’s like a reverse typo.
Qwalify argues that Qualify.com is taking advantage of its mark by attracting unsuspecting internet users and monetizing them with a parked page.
…there is further evidence that Respondent is currently using the domain name in an attempt to attract users to its website for its own commercial gain by creating a likelihood of confusion with Complainant’s Qwalify Trademark. Respondent’s domain name is virtually identical to Complainant’s Qwalify Trademark. Respondent has parked the page as a landing site for paid advertising in the hopes that third parties will misspell the Qwalify Trademark when they are looking for Complainant, and land on Respondent’s page.
Wait — qualify.com is a misspelling? Go figure.
…The more people that navigate to Respondent’s page and click on any of the links contained thereon, the more revenue Respondent can generate through the pay per click advertising. There is no question that Respondent is intentionally trying to attract internet users to its site for its own commercial gain by exploiting the likelihood of confusion with the Qwalify Trademark.
Panelists tend to give some weight to this argument when the parked page includes links related to the complainant. But you won’t find any job or recruiter related links on Qualify.com. Qwalify acknowledges this and argues that parking page’s links are unrelated to common meaning of “qualify”.
The complaint points out how baseless the links are, including an ad for Chuck E Cheese.
(When I go to the domain name the ads are all retargeted ads for sites I’ve visited. I wonder if the computer used to do research was also used to visit kids sites or ChuckECheese.com.)
Qwalify makes the case that the domain owner was aware of Qwalify when it registered the domain name because it was “acquired” around the same time Qwalify filed its trademark application with the U.S. Patent and Trademark Office. In reality, it was just a change in the whois proxy service, so this argument fails.
Even when you ignore the inaccurate portrayal of the domain ownership change, the idea that the acquirer of Qualify.com would be aware of a company called Qwalify is certainly not a given.
If you were buying Qualify.com, would you think to look for a made up homophone?
Should you also search for qualifi? Cwalify? Cualify? Where would it end?
Yet Qwalify argues “Here there can be no doubt that had Respondent made such an effort, as is its obligation, that it would have found Complainant’s Qwalify Trademark…Complainant’s use of “Qwalify” would have been known had Respondent done a simple search engine search”.
A simple search? You’d have to know what you’re searching for. If you search for “qualify”, as you likely would if you were acquiring the domain, you wouldn’t find Qwalify. Qwalify tries to make its point by showing that if you search for “Qualify.com” on Google it asks “Did you mean: qwalify.com”.
Qwalify also claims “There is no way Respondent incurred out of pocket costs in the amounts of hundreds of thousands of dollars.”
It’s true that the domain wasn’t acquired for hundreds of thousands of dollars. But that’s because it was actually acquired in 1999. Had the domain sold in 2012, it’s entirely possible it would have been for hundreds of thousands of dollars.
This case is about a company that made a bad naming decision. It bought a domain name that it now has to spell out to everyone. “It’s qualify, that’s q-w-a-l-i-f-y.”
Yes, internet users are confused by this strange spelling. The complainant gives an example of such confusion: a directory listing for Qwalify that links to Qualify.com instead of Qwalify.com.
That’s the price you pay for not acquiring the right domain name to begin with.
If Qwalify wants Qualify.com, it’s going to have to pay for it. Knowing the owner of the domain name, playing dirty by filing a UDRP may have just increased the asking price.
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