Affirm Inc. is like a new version of AfterPay – where you “buy now and pay later“. They were founded in San Francisco in 2012.
They registered their trademark in Australia in January 2018 as “Affirm”. That was six years after starting in America.
There are currently 20 active trademarks in Australia taken out for the word “Affirm” according to IP Australia, yet Affirm Inc. only own 5 of these, and as stated above, they’re very recent.
There are also over 30 Australian businesses in Australia who have been operating under the term “Affirm” for decades.
Meanwhile, the current owners of the Australian domain name Affirm.com.au legitimately registered their domain name back in 2006 and have continued to pay the renewal fees for nearly 15 years. They have turned down multiple offers to sell the domain over the years.
Yet, Affirm Inc., who employ 1200 employees and are estimated to have generated over $600 million in revenue in 2019, have just decided that they deserve this highly generic Australian domain name instead, for themselves, FOR NO COMPENSATION to the existing owner.
Affirm Inc. recently engaged law firm DLA Piper, most notably Robynne Sanders and Adnan Meher, to file an auDRP in an attempt to try to rip the domain name away from the current owners, with no payment or compensation.
I’ve got news for these would-be bullies…
NO – you can’t just take away our generic Australian domain names for yourselves for free!
On March 17 2021, DBR received this demand notice from DLA Piper;
It was emailed from Adnan Meher from DLA Piper.
I immediately phoned Adnan and frankly said to him, “please inform your client that this is not the right way to go about acquiring a generic domain name that’s been owned legitimately for over a decade, offering a measly $20k to accept transfer or threatening to take it from my clients for no compensation,” or words similar to that effect. When he didn’t agree that he was going about the acquisition in the wrong way, I dared him to file an auDRP and I said, “If you file an auDRP, you will lose and waste your client’s money!”
I then followed that up on the same day with the following email;
That about gets you up to speed with what’s going on with this current auDRP being made against the highly generic Affirm.com.au domain name, but there’s more news to come about this over the following months…
What’s most concerning though, is that I informed Adnan Meher and DLA Piper on the phone and in writing, that it would be pointless filing an auDRP and that THEY WOULD LOSE, yet they still went ahead and filed the auDRP?
How is it fair, for DLA Piper to charge their client a bunch of money, pretty much knowing that they’re probably going to lose the complaint? Did Adnan Meher and DLA Piper correctly advise their clients (Affirm, Inc.) of the projected outcome before filing the auDRP and racking up their billable hours?
I wonder if Max Levchin (co-Founder of Paypal and current CEO of Affirm Inc.) is even aware that his Australian lawyers are effectively trying to rip away the Australian Affirm.com.au domain name from the current owners who have owned it for more than a decade before Affirm, Inc. was even founded in America?
It seems only fair to reach out to Mr Levchin and let him know what’s going on… So I will.
In the meantime, check out how many businesses in Australia have been operating under the generic term “Affirm” for decades…
Good on you Rob. Lawyers are bullies for hire. The decision to do this is simply to see if your client caves.
They will pay $200,000 AUD for this domain name. This is not a figure plucked out of the sky, but a figure close to what was offered for Groupon.com.au back in the day and what several brandable .com.au domain names have sold for privately over the years.
https://delimiter.com.au/2011/01/05/groupon-rails-against-aussie-‘domain-squatters’/
The difference between this and the Groupon example is that this is clearly generic, whereas the word Groupon was a pure trademark with no meaning outside the brand name.
Affirm, Inc needs to do a U-turn ASAP and make a “without prejudice” offer of $80,000 immediately. This is the professional way to go about things.
Based on the facts that you have presented above, my honest opinion is that counsel, besides being bullies, are either exceedingly reckless or quite simply amateurs when it comes to auDRP proceedings.
Thanks for your comments Chris.
Although I don’t agree that ALL Lawyers are bullies for hire, in this case, DLA Piper have certainly gone about this the wrong way. And they were informed this would be the wrong way, before they acted, as I have proven above in writing. There certainly are many Australian law firms out there that need more education in regards to Australian domain name investing and ownership.
I plan on winning this defence for my client and hope to see a Reverse Domain Name Hijacking charge against Affirm, Inc. and DLA Piper.
I would let this one go to dispute because it will be seen as reverse domain name hijacking.
Nobody offers $20,000 for a name that they genuinely believe infringes a trademark, I’d say the lawyers have stuffed up in their approach by trying to combine a very significant cash offer with legal threats if the offer isn’t accepted. A panel or court is not going to look at that favourably.
I have reached out to Max Levchin. Will be interesting to see if he has time to read my message, and if he even knows what these lawyers are trying to do?
This is a great expose of how Reverse Domain Name Hijacking occurs.
These parties are a part of the scourge called RDNH. No Excuses. They know this is an attempted RDNH but they probably don’t care as long as they bill their clients and get paid. Disgraceful and unethical to pursue it via an auDRP
Robynne Sanders and Adnan Meher and DLA PIPER will be named and shamed in the end with an RDNH.
This will be a clear cut RDNH ruling so it will be good its all been exposed.
auDRP panelists and auDA compliance can benefit from such an example and the dirty tactics often used by lawyers to try and steal domain names while profiting themselves in high legal fees.
Soon this complaint and RDNH will be added here.
http://www.RDNH.com
http://Www.HallOfShame.com
Good points, Dan.
Yes, if this case is found to be a RDNH, I will be sure to reach out to the Domain King and get him to add Affirm, Inc. and DLA Piper to the HallOfShame.com
No one better to take them on than you Rob. Your success record is 100%, and with each case, you get additional match practise. The important thing is that you understand the issues, and can distinguish between what is acceptable and what is not.
It is still a shame that even when you win (which you will), your client or you get no reimbursement for costs and time incurred.
Thanks Ned.
It’s crazy that the auDRP system is set up to allow potential domain thieves to weigh up, “should I have a crack at scoring this domain by paying less than $15k for an auDRP and lawyers?” when they most probably know the domain is worth 6-figures.
Well done Rob. 👏👍
It seems like a clear cut case of Reverse Domain Name Highjacking in my opinion.
What absolutely needs to change is the domain owner who successfully defends their domain, having to pick up the expenses tab. WTF is that?? How is that at all fair??
This cost should be paid by the guilty party, not the rightful owner of the domain.
What do others think of this?
Thanks mate.
Yes, I agree the costs should be paid for by the Complainants if they lose!
A good lesson how a 1 word generic domain name value can increase due to the registrant’s costs, time and true market value.
This name is now a $400,000 name.
It’s not uncommon for property prices to sky-rocket when someone tries dirty tactics or even “compulsory” acquisition from a government changing roads or infrastructure.
Property prices normally $3 mil around Sydney’s new airport sold instead for up to $30 mil in recent examples.
Many .com sell at 10x original asking price after a RDNH