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?]
A sane and rational ruling that can hopefully be used as a reference for future domain hijacking attempts.
David J Castello says
Sets an excellent precedent.
John Bomhardt says
Great idea. If you set up a site with a repository of RDNH listings that were successful and failures, hopefully there will be more failures on the list. This repository could serve as a warning to companies that don’t have a leg to stand on…
M. Menius says
An archive of RDNH cases is a very good idea. Reverse hijacking should be a badge of dishonor. A truly fair system would provide for immediate financial penalty for a finding of reverse hijacking.
Does anyone know where I can get a list of cases that were ruled RDNH? I know of a handful, and can google for some others. Or we could make it a collaborative effort where people submit them. But we’d need to start off with a handful.
Good for Greg. Definitely the right decision.
Tim Davids says
a great outcome…congrats to the winners. Rdnh is a great idea…would be a great reference for us all.
I believe myrtlebeach.com won a fight in the past
All I can say is…way to go John!. Thank you for fighting the good fight.
Hi to “MJ” also.
Trademarking generic dictionary words is a ludicrous practice, domain name owners should be re-reimbursed in cases such as these.
I’m sure some trial lawyer in Louisiana will be happy to take his case suing the trademark owner for harassment, loss of income, etc. Louisiana trial lawyers have a good track record of winning large settlements against corporate bullies.
John Berryhill says
A repository of RDNH cases would be helpful, since the UDRP providers do not make them particularly easy to find. Most of the lawyers who defend domain registrants are aware of the ones they’ve obtained, and Ari keeps a list of his at esqwire.com. Off the top of my head, I can recall dw.com, paparazzo.com, fcc.com, windsor.com and multicast.com. While there is no material benefit, the moral vindication is gratifying.
While the panelist noted the date of the domain registration and the trademark, neither side raised it as an issue. Quite simply, decal.com was being used to advertise decals, and this was shown in the Complainant’s own exhibits. Accordingly, we did not bother to pay much attention to the various non-English trademark documents that accompanied the complaint.
I think the arbitration providers should be able to exclude companies from filing claims after they receive a certain number of RDNH affirmations by panels. Hopefully one is enough…
And the sweetest part? John did it with only one instead of 3 panelists. 🙂
Followup: WIPO’s search function allows one to search for RDNH. Go to the link below:
Under “Legal index to WIPO panel decisions”, go to III.G.3 and check the box beside Found. Already I got some results:
I’m somewhat able to get similar results in NAF, although it’s not as search-specific as WIPO’s currently:
Type in reverse domain name hijacking or similar.
John, did you opt for one panelist because it was such a ‘slam dunk’ with the particular panelist? I heard that ‘you should always pick a 3 person panel’
Stephen Douglas says
congrats to John and Greg on the win. It goes to show that the nasty spin of words for domainers like “cybersquatter” or “cyberpirate” can go both ways, with terms like “Cyberhijacker” and “CyberOppresor” being applied to companies who think they can out-muscle legitimate generic domains from reputable domain investors.
Its a damn shame that the finding of RDNH dosn’t come with any penalty. Clearly an innocent domain owner’s name was put in jeopardy and suffered a financial loss on the whim of some corporate giant. Perhaps all those who file UDRPs should be required to post a bond, forfeiting a portion if they simply lose and all if they are found to be attempting a hijack.