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Domain Name Wire

Displaying posts tagged under "reverse domain name hijacking"

  • North Carolina company guilty of Reverse domain name hijacking

    1. BY - Jul 01, 2014
    2. Policy & Law
    3. 0 Comments

    Company claims rights dating to 2010 and domain name was registered in 2002. But…

    Personal Communication Systems, Inc of Winston-Salem, North Carolina, has been found guilty of reverse domain name hijacking.

    The company filed a UDRP against the owner of HealthWave.com. Healthwave is the name of an automated medical appointment reminder system that Personal Communication Systems sells.

    It has a trademark for Healthwave, but the earliest claimed use dates to 2010. The domain name was registered in 2002.

    This was the basis for the company losing the UDRP as well as being found guilty of reverse domain name hijacking:

    The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint. In the Panel’s opinion, the answer to that question must be in the affirmative. The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark. As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.

    Unfortunately for the complainant, it hired lawyers that don’t know how to look up historical whois records at DomainTools. The whois record for the domain name changed from someone in Italy to a company in Panama at the beginning of 2013.

    Based on common ownership of other domain names including Premiums.com, I don’t think the owner actually changed. But pointing out this change would have probably been enough for the company to escape the reverse domain name hijacking charge.

  • Egton loses Patient.com UDRP, but it should have been reverse domain name hijacking

    1. BY - Jun 12, 2014
    2. Policy & Law
    3. 0 Comments

    Egton Medical loses big time, but panel doesn’t admonish it for frivolous filing.

    Egton Medical Information Systems Limited has lost a UDRP it filed against Health Axis Group LLC in March over the domain name Patient.com.

    This was a particularly egregious filing and obvious abuse of the policy. The three person panel found that Egton Medical didn’t prove any of the three prongs of the UDRP.

    Egton also made ridiculous arguments, such as Health Axis Group’s ownership of patient.me being evidence that it’s cybersquatting.

    Egton operates at Patient.co.uk. Here’s an example of one of the overtures Egton made in an effort to buy the domain name:

    […] we get many visits from overseas to the medical information at ‘www.patient.co.uk’. As such we are looking to move to a “.com” domain to position us more appropriately to an international audience. I noticed your domain name had been advertised for sale in the past. Please can you advise as to how much you would want to sell the domain name to me? Kind regards. Ben [F]. Operations Director, Patient.co.uk EMIS.

    After inquiring about buying the domain name multiple times, Health Axis Group finally responded with asking prices between $500k and $2.0 million, which are perfectly reasonable asking prices for this domain name.

    Yet the panelists never mention reverse domain name hijacking. It’s possible, or even likely, that the respondent didn’t ask for it. But it’s the panel’s obligation to consider reverse domain name hijacking when it believes a case has been filed in abuse of the policy. Given that Egton satisfied none of the requirements of UDRP — not even the trademark requirement — the panel certainly should have considered it.

  • Why no RDNH for Thingify.com?

    1. BY - Jun 11, 2014
    2. Policy & Law
    3. 0 Comments

    A classic abuse-of-proceeding case, but no RDNH finding.

    A WIPO panel just handed down a decision in a UDRP for Thingify.com. It follows a familiar story line:

    1. Person starts company, but matching .com domain is taken.
    2. Company opts to use a different extension, in this case Thingify.net.
    3. Company then tries to buy .com but can’t strike a deal at the price it wants.
    4. Company files a UDRP it has no chance of winning.

    In the case of Thingify, Inc, it knew that Thingify.com was registered before it started using the mark. It knew there was no way it could show the domain name was registered in bad faith, but filed a UDRP anyway.

    In fact, here’s how the WIPO panelist summarized his findings:

    Complainant’s own statement of facts and Whois evidence demonstrates that Respondent registered the domain name at issue long prior to the date of first use of the THINGIFY mark by Complainant as well as well prior to application and registration dates for Complainant’s trademark registration.

    It appears the domain name owner represented himself in the proceedings and probably didn’t ask for a finding of reverse domain name hijacking. Still, it’s a panelist’s mandate under UDRP rules to consider a finding of RDNH if warranted.

    I believe it was warranted in this case.

    Panelist David S. Safran didn’t mention it. Instead, he wrote what was effectively a three line determination in the case.

  • FICEP SPA guilty of reverse domain name hijacking in dirty UDRP case

    1. BY - Apr 29, 2014
    2. Policy & Law
    3. 1 Comment

    This case is particularly dirty.

    FICEPItalian machine tool manufacturing company FICEP SPA has been found guilty of reverse domain name hijacking in a UDRP for FICEP.com.

    Czech Arbitration Court panelist Jane Seager got the call right as this is a very clear cut case of reverse domain name hijacking. It was a pretty dirty filing.

    FICEP SPA filed a case against respondent FICEP in October. It was a clear-cut case that it lost.

    Although FICEP SPA has been around for decades, it didn’t file for any trademarks on FICEP until last decade. The respondent is a French company incorporated in 1978 and its founder began providing services in 1973 under the term FICEP. It registered FICEP.com in June 1998.

    That alone was enough to lose the first case.

    The Complainant filed this second case against the respondent in February of this year. In a rather questionable error of omission, the complainant failed to specify whether any other proceedings concerning the Domain Name had previously been brought. One obviously had in the form of the first UDRP denied by Czech Arbitration Court just months ago.

    Once correcting that “error”, FICEP SPA went on to make ridiculous arguments.

    According to the Complainant, the Domain Name has been used since 1998 as a means to deceive the Complainant’s customers. Since 1998, and the complainant is just getting around to taking action? (It apparently first sent a letter to the respondent in 2011, more than a decade after the domain was registered.)

    The Complainant also stated that the Respondent has not been commonly known by the Domain Name because the Complainant is commonly known by this term, and two companies cannot be commonly known by the same term.

    The respondent replied that the arguments are bunk, and pointed out that the case doesn’t qualify for refiling.

    The respondent also suggested he was being set up:

    The Respondent also states that, since the Complainant filed the Second Complaint, it has received several emails and letters addressed to the Complainant, supposedly from suppliers or consumers. The Respondent asserts that such confusion has never happened before and states that the email address used (ficep@ficep.com) does not appear on the Respondent’s website (which refers to ficep@wanadoo.fr), only on its business cards and commercial advertisements. In the Respondent’s opinion, this indicates that the senders probably did not go to the Respondent’s website but were given the address by the Complainant in an effort to demonstrate confusion between the two companies, thus showing the Complainant’s bad faith.

    In this regard, the Respondent states that it has initiated a criminal procedure for fraud before the French criminal authorities and that the legal representative of the Respondent was heard by an officer of French police on 11 March 2014 as part of preliminary investigations.

    FICEP SPA countered:

    …The Complainant argues that the French police report submitted by the Respondent does not prove that the Complainant has committed any fraud, and that this is ultimately a question for a court to decide. Instead the Complainant argues that the report illustrates the Respondent’s bad faith as it did not reply to such emails and did not forward them to the Complainant. In the Complainant’s opinion, the Respondent clearly registered the Domain Name in order to prevent the Complainant (the trade mark owner) from reflecting its trade mark in a corresponding domain name, which is evidence of bad faith in accordance with paragraph 4(b)(ii) of the UDRP…

    FICEP SPA claimed it wasn’t aware of the emails until the respondent brought them up, which is a clear indication that the Complainant is not linked to such correspondence.

    I don’t have access to all of FICEP’s filings in this case, but it’s interesting how the panelist’s interpretation doesn’t include FICEP initially fully denying the accusation. In its first response, FICEP SPA merely said the allegations weren’t proven and needed to be handled by a court. Why not just come out and say the accusation was false in the first response?

    Panelist Jane Seager found FICEP SPA guilty of reverse domain name hijacking on the grounds that its omission of completing the section on previous filings was likely on purpose and that it should have known its second filing would fail based on the clear-cut decision in the first case.

  • UDRP complainant shoots self in foot with supplemental filing

    1. BY - Apr 07, 2014
    2. Policy & Law
    3. 0 Comments

    Company effectively admits its original complaint was destined to fail when it makes supplemental filing.

    Inbay Limited of the United Kingdom has been found guilty of reverse domain name hijacking in a UDRP for Inbay.com.

    The three person panel found that Inbay should have known its complaint would fail from the outset. Perhaps more importantly, it should have known it would fail after receiving the domain owner’s response — yet it decided to file a supplemental filing anyway.

    That supplemental filing gave me a chuckle.

    Inbay.com was registered in 1998 and Inbay Limited thought the current registrant was the original one. If this were the case then Inbay.com was registered well before Inbay became a company.

    Yet in the response, the registrant noted that it didn’t actually get the name until 2007. This opened up the door for Inbay Limited to argue that it was related to some predecessor companies that were formed before the current registrant picked up Inbay.com.

    So the company filed a supplemental filing discussing these predecessor companies.

    In order to make a supplemental filing you are supposed to show that new information has come to light that you couldn’t possibly have known when making the original filing. Here’s how Inbay Limited justified the new filing:

    The stated basis for the introduction and requested admission of the Supplemental Filing was that, as the Respondent had disclosed that its date of registration of the Domain Name was in 2007, not 1998 (as alleged in the Complaint), evidence of the common law rights in INBAY held by the Complainant’s predecessors and allegedly transferred to the Complainant was relevant.

    In other words, Inbay knew its original filing was destined to fail, but now it felt like it had something to go on.

    Sigh.

    Add Inbay Limited to the reverse domain name hijacking list, and another win to domain attorney Zac Muscovitch’s tally.