Company goes after domain name registered several years before it created its brand.
Nat Cohen’s Telepathy, Inc. has successfully won a charge of reverse domain name hijacking against X6D Limited, which owns the XPAND brand of 3-D glasses.
X6D filed the complaint over the domain name xpand.com. Telepathy, represented by domain name attorney Ari Goldberger, noted that it’s common to eliminate the ‘e’ in words that start with ‘ex’. The panel agreed, arguing that xpand was a single descriptive word:
The Panel considers the disputed domain name contains at its second level a single descriptive term. Many English words starting with “ex” are commonly misspelled by omitting the “eâ€ at the beginning, inter alia, “xtremeâ€ (misspelling of “extremeâ€), “xchangeâ€ (misspelling of “xchangeâ€), “xcessâ€ (misspelling of “excess), “xactâ€ (misspelling of “exactâ€), “xcelâ€ (misspelling of “excelâ€), and so forth. In the Panel’s assessment, the public readily identifies the misspelled word in these cases.
The panel also agreed that buying descriptive and generic domain names as an investment is a legitimate use of a domain name:
Due to the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder. Such a practice – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights.
All of this is well and good, but the real crux of the case came down to dates. Telepathy registered the domain name in 2003, three years before X6D says it started using the XPAND brand. Thus, it’s impossible that the domain name was registered in bad faith targeting X6D. X6D offered $10,000 to buy the domain name. When that failed, it filed the UDRP.
This helped Telepathy win a charge of reverse domain name hijacking:
In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.