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  • Procter & Gamble guilty of reverse domain name hijacking

    1. BY - Mar 11, 2013
    2. Policy & Law
    3. 13 Comments

    Consumer products giant provided false sales numbers to WIPO panel.

    A World Intellectual Property Organization panel has found Procter & Gamble guilty of attempted reverse domain name hijacking over the domain swash.com.

    Marchex has owned the domain name since 2004. P&G launched a new brand called Swash several years later.

    In its complaint, P&G originally stated that it had generated more than $40 million in Swash sales over the past four years. It also claimed some trademark rights going back to 1993.

    The respondent’s attorney, John Berryhill, was suspicious of the sales number. After being pressed, P&G admitted that it actually made sales of only $60,000.

    Also, the 1993 trademark was actually assigned to P&G after Marchex owned the domain and it was not valid in the United States.

    The three person panel found that it was impossible Marchex could have known of P&G’s Swash brand when it acquired the domain name because the brand didn’t even exist. It wouldn’t exist for several more years.

    In finding P&G guilty of reverse domain name hijacking, the panel noted that both the company and its attorneys, Keating Muething & Klekamp PLL, have been involved in numerous UDRP proceedings. The panel found it “impossible to believe” that P&G wasn’t aware of the Swash.com domain name prior to introducing its original product line.

    But the really damaging part was the initial claim to $40 million in sales:

    The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.

    If you’re wondering why P&G is suddenly interested in this domain name after many years of marketing a failed brand, perhaps a recent trademark filing is a clue.

    In September 2011, P&G filed a trademark application on an intent-to-use basis with an opposition period that expired shortly before the complaint was filed. The specification of goods reads “An appliance for domestic use in the nature of a garment steamer for the purpose of removing wrinkles and odors from clothing and linen”.

    Is P&G getting ready to launch a new product under the Swash name, so now it wants to get control of the corresponding domain?

13 Comments
  • The false statement that was contained in this UDRP, under UK laws at least, amounts to “attempting to pervert the course of Justice” and in addition if the statement was made by a lawyer then he would be in trouble.

  • So who cares, company is all that money defending this joke of a suit, they get RDNH designation on the paperwork, money talk, RDNH walks… There is no real justice here…

  • if i was a better man i’d look up all p&g products… list them here and have people sign a statement declaring they’d never buy them again. but who am i kidding? that would involve work and just like to stay home and drink.

  • Chris Noel says:

    March 11, 2013 at 1:18 pm

    I agree with Ron. There needs to be some punitive financial penalty to disuade this type of behaviour. Otherwise, P&G just spent a little pocket change on a lottery ticket while many domain owners may not have the financial ability to properly defend themselves.

  • Perhaps someone will look to see if this amounts to Criminal conduct in USA and then pursue that. This would perhaps then make others less likely to try again.

  • GoneDoneAndDidItNow says:

    March 11, 2013 at 2:20 pm

    Well, it sure looks like Proctor and Gamble, in collusion with their legal team, colluded to steal this domain name. Ever detail was worked out it seems to execute the innocent domain holder.

    Shame on you P&G . I hope you burn in corporate hell (which God is surely creating separately for people like you) for seemingly trying to steal like a dirty street thug.

    A truly disgraceful, un-American company, IMO. Where are your ethics?

  • Domainer Extraordinaire says:

    March 11, 2013 at 2:49 pm

    Back in ’95 P&G snatched up a ton of generic product names. They were way ahead of the curve in seeing the value of domain names.

  • I use to work for P&G many years ago. There was a time (long ago) when this type of behavior would have been squashed internally as not matching the corporate principles for ethical behavior.

    Since about 2000, P&G has struggled to meet growth and profit objectives and it appears some of the principles which made the cmpany great are now being tossed aside…

  • Doesn’t surprise me that they took a chance and lost.

    What do you expect from a company called Procter & “Gamble”? ;-)

  • I too worked for P&G many years ago. At the time it was the most honest and ethical company in the industry. The guiding principle was, “is this the Procter way to do things”, and if the answer was “no”, it was a given that you did not do it. No questions or discussion. This makes me sad. Not sure what this says about the company or the outside lawyers they are hiring or both.

  • An interesting parallel that never seems to get much discussion is the TM hoarding CPG companies do with brands–even without a product that shares that same brand name. P&G, M&M/Mars, GM, Johnson & Johnson, etc… have hundreds if not thousands of TMed brand names that they are holding until they have an opportunity to use them or to keep them out of competitors hands. Seems like the very same things Domainers do but according to the IP community it is above board and acceptable.

  • I worked for Procter and Gamble until little more than a year ago. I am sorry to say that reading about these events did not surprise me at all. In fact, despite their code of ethics and claims to uphold principles, this is not the first time that P&G has willfully violated its own claimed ethical standards…

    • Let me also quickly add that, in my opinion, much of the ‘ethical outage’ at P&G is rooted in the Company’s Legal team.. P&G’s legal organization plays hardball, but they care little for principles. Their primary goal is simply to win, meaning to maximize profits for the Company.. BUt only a fool confuses winning (whether in Court of via policies in the workplace) with true ethical behavior. Serious ethical behavior requires making choices based on principles, not just making calculations about whether or not one is likely to ‘get away with it’. That distinction casually and regularly ignored within P&G’s Legal organization. .

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