Lawyer defends Gregory Ricks on Decal.com, wins RDNH charge.
Domain name lawyer John Berryhill has successfully defended famed domainer Gregory Rick’s Decal.com domain name, as well as getting a charge of reverse domain name hijacking against Italian company Decal (Depositi Costieri Calliope).
The decision, handed down on June 11 and just posted online, details an egregious attempt by the Italian company to steal a generic domain name that wasn’t used in an infringing manner. The domain name Decal.com is hosted on a Domain Sponsor parked page and only shows ads related to the common definition of decals, or stickers.
The panel railed against Decal for it attempt and said it was misguided and that its case was “fatally weak”. As to Ricks having “no rights or legitimate interests” in the domain name, the panel wrote “The Complaint however is misconceived in relation to this second element of the Policy…In this case, it is plain that the disputed domain name has a descriptive or “genericâ€ meaning in English, and that the Respondent is based in an English-speaking jurisdiction (the United States of America)”.
As part of its evidence that the registrant should have known about the trademark for “Decal” when the domain was registered, Decal attached a printout of a Google search that shows the complainant in the first position for a related search term. The domain was registered over 12 years ago. As the panel points out, Google wasn’t even around then.
In finding Decal guilty of reverse domain name hijacking, the panel wrote:
The Panel makes its findings of reverse domain name hijacking for similar reasons. The Complainant should have known its case was fatally weak, in relation to the second and third elements of the Policy. It seems plain that the Complainant, had it properly understood what was required, would have understood that it could not make its case.
The Respondent has a long-standing registration of a domain name with a generic meaning, and uses it in that connection. This is evident from the nature of the Respondent’s website. The Complainant lacked any credible evidence of bad faith registration and use of the domain name.
Moreover, it is significant that the disputed domain name was registered before the Complainant acquired registered trademark rights.
[Editor’s note: Perhaps most shameful, Decal was represented by Landwell-PricewaterhouseCoopers LLP of Spain, a recognized international firm. Also, I own RDNH.com. Perhaps it’s time to make a repository of Reverse Domain Name Hijacking cases?]