Domain Name Wire

Domain Name Wire

  • ECommerce company Eyemagine found guilty of reverse domain name hijacking

    1. BY - Feb 20, 2013
    2. Policy & Law
    3. 6 Comments

    Company claimed rights to domain registered in 1996, well before it started using the name as a brand.

    Irvine, California eCommerce technology company Eyemagine Technology LLC has been found by the World Intellectual Property Organization to be guilty of reverse domain name hijacking.

    The company, which says it started using the Eyemagine brand in 2003, filed the complaint against a construction company that registered the domain eyemagine.com way back in 1996.

    The construction company has used the domain name for its construction business from time to time. In 2010 it also registered eyemagine.info, which was included in the UDRP proceeding.

    Despite Eyemagine’s creative arguments as to why a domain registered many years before it started using the Eyemagine mark was registered in bad faith, the panel found against it. It also found that the complaint was brought in bad faith. Here’s how it describes the reverse domain name hijacking:

    In this case, there are several indications that Complainant was acting in bad faith. Given the record, it strains credulity that Complainant did not know or should not have known that it could not establish Respondents’ lack of legitimate interests or Respondents’ bad faith registration and use for at least one of the Domain Names. The Panel, in particular, notes:

    (1) For the Domain Name, the several-year gap between Respondents’ domain name registration year (1996), Complainant’s earliest filing year for its mark registrations (2009), Complainant’s earliest “use in commerce” year for its mark registrations (2003), and the year in which Complainant allegedly acquired common law rights in the mark (2003)—Complainant clearly should have known that Respondents’ registration of pre-dated any claims in the mark Complainant might have had.

    (2) For the Domain Name, Complainant itself cited Respondents’ use of the mark and Domain Name in conjunction with the deck and patio construction business several years prior to any rights that Complainant purports to have acquired.

    (3) To the extent that Complainant believed it might establish registration in bad faith for the Domain Name on a constructive notice theory, Complainant should have known that UDRP panels have required that bad faith be predicated on actual notice by respondent absent more evidence that the mark is famous (see WIPO Overview 2.0, paragraph 3.4).

    (4) To the extent that Complainant believed it could convince the Panel to depart from requiring bad faith registration and use conjunctively—on the theory that Respondents were relying upon an initial good faith registration to use a domain name in bad faith with impunity—Complainant clearly should have known that, at minimum, it would need to bring evidence of Respondents’ abuse. The sole evidence Complainant appears to have brought is Respondents’ general unresponsiveness to the bargaining tactic of offering the same amount of money to purchase the Domain Names three times.

    It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.

    Eyemagine was represented by The Law Office of Darius Gleason. The respondent was represented by Perry IP Group A.L.C.

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