Company filed UDRP case even though the domain names at issue were not registered in bad faith.
South African firm Cobb International has been found guilty of reverse domain name hijacking in a UDRP decision at World Intellectual Property Organization.
Cobb International filed a UDRP for the domain names CobbQ.com and CobbAmerica.com against Chris Holloway, Cobb Depot, Inc., Advanced Outdoor Concepts, Inc in Florida.
The respondent in the case was a distributor for the complainant and registered the domain names in that capacity. The distributorship ended in 2013, at which point the complainant wanted the respondent to hand over the domain names.
The case failed because the respondent clearly didn’t register the domain names in bad faith. Even if it used them in bad faith, its original registration was in good faith to help sell Cobb products through its business. The UDRP requires that the domain names were registered in bad faith.
Cobb International cited another case that it won against a former distributor. Although the circumstances were similar, it was for a .au domain name. The .au policy differs from the main UDRP because it requires only bad faith use, not bad faith registration and use.
This is where the reverse domain name hijacking comes in. When Cobb International submitted its case, its counsel DM Kisch Inc. modified the heading in the UDRP template for “Registered and used in bad faith” to just “Used in bad faith.” Panelist Tony Willoughby found this, along with other issues, to be grounds for reverse domain name hijacking.
The Panel doubts that a firm as distinguished as the Complainant’s representative would intentionally seek to abuse this administrative proceeding, but it is nonetheless the fact that the person responsible for drafting the Complaint worked from the online form available at the Center’s website and went to the trouble of changing the template heading as described in Section 5A above to omit any reference to bad faith registration. Why?
Even when given a chance to submit more information, Cobb International didn’t provide any evidence that the domain was registered in bad faith.
While distributorship agreements should include language around domain names, I don’t know if any was included in this case. Even if it was, such a clause is not grounds for a cybersquatting claim under UDRP.