Who actually owns this domain?

A World Intellectual Property Organization (WIPO) panel has ordered the domain name Pepper.com.au be transferred to Pepper Australia Pty Ltd, a home loan company.

The case was filed under .au Dispute Resolution Policy, which is different from the standard UDRP. Compared to UDRP, the .au policy is more lax on proving rights in a mark. It also requires only bad faith registration or use, not bad faith registration and use.

That said, how the panel came to its conclusion in this case is really strange. Basically, the respondent in the case Massive Networks Pty Ltd, deregistered as a company in 2010. The panel thus rules that it can’t have any rights or legitimate interests in the domain:

It cannot therefore hold property such as the registration of a domain name. The Panel concludes that it cannot have or claim any rights or legitimate interests in the disputed domain name.

Then the panel states that the respondent in the case did not register or use the domain in bad faith. Nevertheless, someone is now using it in bad faith, the panelist decides:

However the current use of the disputed domain name cannot be use by the Respondent, which no longer exists. It must therefore be use by an unidentified person or company. The website to which the disputed domain names resolves directs a visitor to travel agency offers and products and appears to have no connection to the Respondent or anyone connected to it.

In that case isn’t the respondent in the case not who it should be?

Seems like perverted justice to me.

Spinning the wheel in UDRP roulette.

SMA Solar Technology AG has filed a UDRP case with World Intellectual Property Organization for the domain name SMA.com.

SMA.com belongs to Specialized Micro Architects. It was originally registered in 1995 and currently has an expiration date of 2017. The oldest whois record at Domain Tools shows that Specialized Micro Architects has owned the domain since at least 2001, although it may have been the original registrant.

The most recent content capture at Archive.org dates to 2001.

It’s no wonder that SMA Solar Technology wants the domain. It’s current web address is SMA.de.

One possibility is that it has been trying to reach the owner of SMA.com about buying the domain but hasn’t had luck, so it filed the UDRP as a last resort. I tried calling the phone number on the whois record but the call didn’t go through. I also sent an email. It hasn’t bounced (yet).

Any competent UDRP panel will find against SMA Solar Technology.

German company goes after three letter domain 16 years after it’s registered.

I’ve seen a lot of egregious UDRP cases over the years. This one may take the cake.

Imagine the year is 1995. You register the domain name GEA.com because your personal initials are GEA and you have a business called G.E.A. Design.

Then 14 years later, in 2009, a German company starts complaining that its acronym is GEA and you should sell it the domain name for a nominal amount so it can upgrade its web address from GEAGroup.com. When you refuse, a couple years later — 16 years after you registered the domain name — the company files a UDRP against you.

That’s exactly what happened when GEA Group Aktiengesellschaft filed a case against a California man this year.

The WIPO panelist sums up the bad faith argument fairly nicely:

The Complainant’s suggestion that the Respondent’s failure to display content on the website since 2007 would somehow confuse Internet users is not in the Panel’s view credible. In addition the Panel notes that the Respondent has apparently refused numerous offers for sale of the Disputed Domain Name from various organizations, including from the Complainant, on the legitimate basis that it has used its email address from this website for many years and that to sell it and to have to change email addresses would cause the Respondent considerable disruption and inconvenience. In these circumstances the suggestion by the Complainant of its impression, based on its lawyers’ communications with the Respondent in 2009, that the Respondent would be prepared to sell the Disputed Domain Name for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight.

Overall, the Panel’s view that the Disputed Domain Name has not been registered or used by the Respondent in bad faith is only reinforced by the delay of the Complainant in acting to obtain the Disputed Domain Name. Had the Complainant really been concerned about the Respondent’s illegitimate motives or about damage to its reputation it would not have waited so long after the initial registration in 1995 of the Disputed Domain Name to first communicate with the Respondent (the first communication with the Respondent by the Complainant’s lawyers appears to have occurred in 2009) and a total of 16 years to bring this Complaint.

Needless to say, the panel ruled that the domain owner can keep the domain name. But he should have also found GEA Group Aktiengesellschaft guilty of reverse domain name hijacking.

Panel blasts law firm for either trying to mislead panel or being “inexcusably careless”.

Last year a World Intellectual Property Organization panelist called a case represented by law firm Novagraaf Nederland a “flagrant abuse” of the UDRP. In that case, the law firm told the panel that its client had been in business from 1994 but didn’t disclose that it had just recently changed its name to reflect the domain name at issue. Novagraaf Nederland also stated that its client, a big bank, had a greater right to the domain name than the individual owner.

Fast forward less than 12 months and the same law firm is getting whipped by a WIPO panel again. In fact, the panel decided the case was reverse domain name hijacking and that the legal representative should be censured.

The case was filed on behalf of Coöperatie Univé U.A. for the domain name Unive.com. The complainant said it registered the domain name in 2000 but accidentally let it expire in 2010, and the respondent registered the domain name upon expiration.

But that’s not what happened. It let the domain name expire a long time ago, and the respondent was the registrant since at least 2003.

Furthermore, the complainant submitted evidence in the form of an email exchange with the respondent prior to the UDRP filing in which the respondent claimed this early ownership. This correspondence had been forwarded to the law firm, so the panel says it was “on notice” about the registration dates.

As a result, the panel writes:

The Panel is mindful of the concurring opinion in Credit Europe, supra, a case featuring the same professional representative as the Complainant’s representative in the present case. The panelist who wrote the concurring opinion, a member of the Panel in the present case, noted therein that the complainant in that case had misled the panel inter alia in its description of the facts upon which the complaint was based and called for “the limited censure available to the Panel under the Policy and the Rules, if only to deter similar conduct in future.” The Panel in the present case considers that it is lamentable that the Complainant’s representative appears to have failed to address these concerns and thus has brought two cases under the Policy within a year in which there is a real prospect that it has either deliberately sought to mislead the panel or has been inexcusably careless in the manner in which it has pled its client’s case. The Panel is unanimous that this deserves censure.

Novagraaf Nederland is an intellectual property law firm, by the way.

The respondent was represented by John Berryhill.

WIPO panelist doesn’t bother to consider a sure-fire reverse domain name hijacking claim.

I realize UDRP panelists aren’t paid much to handle cases, but there must be a minimum standard here.

Why the frustration? Take a look at the recently decided case for Cite.com.

The owner of the domain name registered it in 1997 and started a business called Cité Consulting. The complainant Systemware, Inc. didn’t start using the term “CITE” in commerce until 2011.

I understand that Systemware may not have been aware that the domain owner had a consulting company using the domain name. But the 14 year difference between his registration and the company’s first use of the term is enough to make this case a complete joke.

The respondent rightfully asked for a finding of reverse domain name hijacking.

But in one of the shortest UDRP decisions I’ve ever read, panelist Christopher J. Pibus didn’t even bother to consider RDNH.

Update: I have received a copy of the original complaint. Systemware’s lawyers cited Telstra v. Nuclear Marshmallows as rationale for how the domain could have been registered in bad faith if used later in bad faith. Also, the owner of the domain name belatedly discovered that the lawyers had sent an email inquiring about purchasing the domain, although he missed the email originally.