Procter & Gamble guilty of reverse domain name hijacking
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?