Typo recovery company embarrassed by TinyPrint.com case.
For the second time, cybersquatting recovery company CitizenHawk has been chastised by a UDRP panelist for submitting a boilerplate complaint. This time the panelist threw in an added bonus, finding the company’s complainant guilty of reverse domain hijacking.
CitizenHawk filed a complaint on behalf of Tiny Prints, Inc. for the domain name TinyPrint.com. Before discussing the merits of the case, panelist David A. Einhorn noted:
The Panel notes that this Complaint, prepared by Complainant’s representative, CitizenHawk, is so poorly drafted and difficult to read that the Panel found it necessary to study the exhibits and review online data to make sense of the allegations. It should be noted that in another recent proceeding in which the complainant was represented by CitizenHawk, the Panel therein noted that it was “quite troubledâ€ by the apparent carelessness with which the complaint in that proceeding was prepared. Proto Software, Inc. v. Vertical Axis Inc. / PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006). This Panel echoes those sentiments.
Einhorn found that the domain name wasn’t registered in bad faith. It was filed previous to Tiny Prints first trademark filing, and even before the company’s intent-to-use filing. Einhorn asked the company for proof of common law rights to the name prior to the registration, but wasn’t impressed with what he received:
By interlocutory order, this Panel requested that Complainant provide documentation and/or statements substantiating said alleged use of the TINY PRINTS mark prior to June 13, 2005.
In its response to such interlocutory order, Complainant did not provide evidence of any trademark usage whatsoever. Specifically, Complainant provided the Panel only with an assignment of employment identification number (EIN) form and a 2004 tax return. No trademark specimens, product descriptions, brochures, product photos or other evidence of usage was provided to the Panel. Procuring assignment of an EIN and payment of taxes by a legal entity alone does not constitute use of a mark in commerce.
In finding Reverse Domain Name Hijacking, Einhorn wrote:
This Panel provided Complainant with a second chance, by interlocutory order, to provide evidence of its alleged trademark usage upon which it based its claim of common law rights. Even after this second chance, Complainant failed to provide any evidence of use of the mark whatsoever prior to Respondent’s registration of the domain name.
Thus, Complainant and its representative, CitizenHawk, must have been aware, at the time the Complaint was filed, that there was no valid trademark usage by Complainant predating Respondent’s registration of the domain name. It follows that this Complaint was brought in bad faith and that, accordingly, Complainant has attempted to engage in Reverse Domain Name Hijacking.
There should be some stiff fines for cases like these. A lot of valid domainers need to pay legal expense for bogus claims and there needs to be a message if you file an invalid claim you will pay for it. End of story.
This is good to see some common sense by
And, I’m glad CitizenHawk got their fingers
slapped. However, it will not change anything
with CitizenHawk. All that it will cause is
CitizenHawk being more prepared the next time.
CH are cybersquatters cloaked by a white hat
They will go after the wrong person soon and will end up in court. This abuse pattern is now easy to spot.
I have to defend against a case filed by these clowns at CitizenHawk. How much does it cost and who can help me? Does this decision show that I’m being bullied?
Andrew Allemann says
Daniel wrote “Does this decision show that I’m being bullied?”
Depends on the domain name. Maybe you’re being bullied, maybe it’s legit.
Steve M says
… so once again we see that common law rights … are not so common after all.
Landon White says
It is important to note..
A panelist member did recognize a
“Reverse Domain Name Hijacking” FACTOR however were they steered that way because the complaint was poorly presented?
( Panelist D A Einhorn stated:
the Panel therein noted that it was “quite troubled” by the apparent carelessness with which the complaint in that proceeding was prepared.)
Would a obvious “Reverse Domain Name Hijacking” FACTOR
been possibly overlooked…
had this not have been the case.
This is really another argument for pre-hearing preliminary examination
criteria rules to be established,
(mandatory filing rules before a hearing is even scheduled )not just in fairness to all, but this frivolous claim would not have been allowed to waste the defendant and the frustrated panels members openly stated, waste of discovery time and resources.
Steven Rinehart says
I am the attorney who represented the Respondent in this case. I regularly represent domainers, and would be happy to help with any UDRP problems any of you may face. [email protected] / (888) 941-9933.
Thanks Steve….nice to have another lawyer representing us domainers.
I sure it is just a matter of time before Citizen Hawk gets around to each and every domain investor.
I’ve got money reserved just for this type of sh*t complaint, and any domain I am serious about keeping will see those funds applied to. I’ll skip UDRP and go straight to court if Citizen Hawk tries this with me.