Displaying posts tagged under "reverse domain name hijacking"
Florida bar filed UDRP despite knowing domain name wasn’t registered in bad faith.
Castaways Bar, LLC , owner of Square Grouper Tiki Bar in Jupiter, Florida, has been found guilty of reverse domain name hijacking by filing a UDRP against SquareGrouper.com.
When the company opened its bar in 2003, SquareGrouper.com was already registered. The registrant apparently was working on a screenplay by the name Square Grouper, and had already registered a “treatment” with the Writers Guild of America West for the screenplay.
Thus, the bar ended up registering SquareGrouper.net. It says it was “forced to utilize” the domain name squaregrouper.net “due to the misappropriation and holding ‘hostage’ by the Respondent of the .com domain name”.
In other words, the respondent had already registered the domain name before Square Group Tiki Bar was in existence, so it went with the alternative .net domain name instead.
Fast forward to 2013, when a representative for the bar sent a note to the respondent that read “I see you are the owner of SquareGrouper.com and I wanted to reach to you about purchasing this domain from you. I represent Square Grouper Tiki Bar in Jupiter, FL. We have had the .net domain for a few years now but would like to get the .com as well”.
When the respondent didn’t reply, Square Group Tiki Bar filed a UDRP, a clear abuse of the proceeding:
However, in the circumstances of this case that delay leads to the conclusion that Complainant did not regard Respondent’s registration as having been made in bad faith. This in turn leads the Panel to the conclusion that, knowing that the Domain Name was not registered in bad faith, Complainant nevertheless brought this proceeding in an attempt to deprive the registrant of the Domain Name and has thereby engaged in Reverse Domain Name Hijacking.
Humorously, the complainant argued that the respondent “apparently routinely traffics in domain names for the purpose of speculation and resale profiteering” because it owned 22 domain names.
The bar was represented by Carl Spagnuolo of McHale & Slavin, P.A..
Company never alleged domain was registered in bad faith…just use in bad faith.
Timbermate Products Pty Ltd of Nunawading, Australia, has been found guilty of reverse domain name hijacking by a World Intellectual Property Organization panel.
The company, which uses the domain name timbermate.com.au, filed a UDRP against the domain name timbermate.com.
The owner of Timbermate.com was, at one point, a distributor for Timbermate in the United States. After the distributorship arrangement was over, the domain owner briefly pointed the domain name to a competing product.
Thus, the domain name wasn’t registered in bad faith, but was subsequently used in bad faith. Timbermate never alleged it was registered in bad faith in its complaint. Panelist Tony Willoughby said it was clearly used in bad faith, but not registered in bad faith.
Despite the domain owner not filing a timely response (and thereby not asking for reverse domain name hijacking), Willoughby fulfilled his duty by considering the matter.
And wow, did he consider it. He wrote what was perhaps the longest RDNH decision in UDRP history.
Is the fact that the Panel has found that the Respondent is using the Domain Name in bad faith a relevant factor? Can that fact counter-balance any bad faith intent behind the filing of the Complaint? The Panel does not believe so. Two wrongs do not make a right.
On the findings of the Panel the Complainant has brought a fundamentally misconceived Complaint. It should never have been brought. Paragraph 4(a)(iii) of the Policy calls for bad faith registration and use, yet there is no dispute that the Respondent’s registration of the Domain Name was in good faith…
…The Complainant is a law firm and the Panel finds it difficult to believe that a law firm would intentionally set out to abuse the process in this way. Equally, the Panel finds it astonishing that a law firm could produce such a fundamentally flawed Complaint. Occasionally, such complaints stem from an ignorance of the UDRP case law and the resources available on the Center’s website. In this case, however, the Complainant cites from the case law and relies on a passage (albeit an incomplete passage) from the WIPO Overview (see the reference to Mowitania Wendt & Molitor GbR v. Eric Clermont, supra…
…Accordingly, the Complainant (through its representative) was only too well aware of the conjunctive requirement and instead of citing any previous decisions on the topic under the Policy elected to cite an Irish decision, Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003, a case under the IEDR Policy, which does not incorporate the conjunctive requirement.
The Panel finds that “the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeeding”. The fact that the Domain Name is identical to the Complainant’s trade mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is making bad faith use of the Domain Name does not alter the fact that under the Policy the Complaint was doomed to failure and the Complainant (through its representative) knew it.
I’m a bit confused by the panelist’s assertion that the complainant is a law firm. When he wrote that, I think he mean it was represented by a law firm.
It’s interesting, too, that some rogue panelists might actually find in Timbermate’s favor here.
Timbermate was represented by K & L Gates LLP.
Australian charter jet company didn’t give the full story to WIPO panel.
Frank Schilling’s Name Administration has successfully defended another UDRP filed against one of its domain names. The three person UDRP panel also found the complainant guilty of reverse domain name hijacking.
JetGo Australia, an airplane charter company, filed the complaint over the domain name JetGo.com.
This is a classic case of a company adopting a company name in which the .com was already registered, but then claiming it was registered in bad faith. The panel determined that it was impossible the domain was registered in bad faith to target JetGo, which at the time had yet to select “JetGo” as its brand.
The reverse domain name hijacking charge came about because JetGo tried to mislead the panel with evidence showing that Name Administration offered to sell the domain name. JetGo omitted the full communication between the parties, which showed that it was JetGo that wanted to buy the domain name and Name Administration was merely responding to its offer:
The Panel considers that the Complaint filed in this case was brought in bad faith, and constitutes an abuse of the administrative proceeding, on the basis that it is seriously misleading. In particular, the Complaint fails to set out fully facts that were fundamental to the Complainant’s case and of which the Complainant had knowledge – namely, the Complainant’s unsolicited initiation and renewal of communications with the Respondent regarding possible purchase of the disputed domain name. By failing to state these facts, the Complaint makes an implied assertion that is false – namely, that the Respondent’s offer to sell the disputed domain name to the Complainant for a substantial sum was unsolicited by the Complainant. This false assertion might have misled the Panel had not the Respondent provided the evidence, readily available to the Complainant, that refuted this implied assertion. To knowingly make a false implied assertion on a material issue is evidence that the Complaint was brought in bad faith. Furthermore, it is simply not fair to require the Respondent to provide evidence establishing that the Complainant’s case on a material issue is without basis when the Complainant must have known this fact.
JetGo was represented by Sparke Helmore Lawyers. Name Administration was represented by John Berryhill.
Croma went after a domain registered a decade before its existence.
Infiniti Retail Ltd., a TaTa company that runs the Indian electronics chain Croma, has been found guilty of reverse domain name hijacking.
The company, which operates at CromaRetail.com, filed a UDRP to get the domain name Croma.com.
It didn’t start using the Croma brand until 2006, which is a full decade after the owner of Croma.com registered the domain name. Croma.com had been in use to promote the registrant’s web services until 2011. It’s now a placeholder page thanking customers for their previous business.
This was an easy case for panelist Alistair Payne, who determined that the registrant had rights or legitimate interests in the domain name and it wasn’t registered in bad faith.
He went a step further, ruling that the case was an abuse of the policy:
The Panel finds that the Complaint was an unnecessary imposition upon the Respondent and an abuse of the Policy. There is moreover no evidence before the Panel that the Complainant ever previously communicated with the Respondent, whether concerning an alleged infringement of its rights, or with regard to commercial acquisition of the disputed domain name. It appears to the Panel that the Complaint was simply brought in an attempt to obtain a domain name that the Complainant decided after the fact it would like to own for its own business purposes. In these circumstances the Panel has no hesitation in finding that the Complaint amounts to an attempt at reverse domain name hijacking.
It’s noteworthy that he brings up that it doesn’t appear that Infiniti Retail ever reached out to the domain name owner. If that is indeed the case, one has to wonder why? Given that the respondent has changed business models and isn’t currently using the site, you would think they’d at least consider selling it.
M/s. Core Diagnostics filed UDRP against domain name registered a decade before it was founded.
World Intellectual Property Organization panelist Richard Hill has found M/s. Core Diagnostics, owner of CoreDiagnostics.in, guilty of attempting reverse domain name hijacking.
The Indian company started its business in 2011 and registered its trademarks in 2012.
Still, it filed a UDRP against the owner of corediagnostics.com, who registered the domain name in 2001. The registrant has been using the domain name to promote its medical devises.
In other words, this was a dead-on-arrival UDRP filing. Here’s how Hill explains his decision on RDNH:
The Respondent notes that his registration of the disputed domain name far predates Complainant’s claim of rights in the CORE DIAGNOSTICS mark. The Complainant knew this because it produced the WhoIs record for the disputed domain name as an attachment to its Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith.
It’s cases like this that remind me of a simple plan to reduce frivolous UDRP cases: the complainant must check a box verifying that its rights predate the domain registration date.