ShoeBuy.com registered typo of its own domain name, only to have to defends itself for cybersquatting.
Imagine you’re an online shoe retailer. To protect against cybersquatting you register over 100 common typos of your domain name.
Then one day someone comes along and says that one of the typos of your domain name infringes on its trademark.
That’s what happened in the recently decided UDRP for Shoeby v. Shoebuy.com for the domain ShoeBy.com.
Shoeby is a Netherlands seller of shoes, clothes, and bags that commenced business in 1982. Shoebuy.com is an online shoe retailer founded in 1999 that receives 8 million unique visitors a month.
ShoeBuy.com said it was not aware of Shoeby when it registered the Shoeby.com domain name, an action it undertook “in a good faith attempt to protect itself from the very conduct that the UDRP was intended to cover.”
Indeed, ShoeBuy.com has experience with UDRPs but on the other side of the table. It filed a case in 2007 for ShoeBuys.com, but it lost.
In the instant case the panel found that ShoeBuy.com clearly has rights or legitimate interests in the domain name and didn’t register it in bad faith. It appears that ShoeBuy.com also made a good faith effort to address Shoeby’s concerns by offering to put up an interstitial at Shoeby.com with a link to the Netherlands retailer.
The panel found that Shoeby was guilty of reverse domain name hijacking:
…the Panel considers that the Respondent’s registration of the Domain Name could not have been in bad faith on any fair interpretation of the facts, and that the Complainant should have appreciated at the outset that its Complaint was bound to fail. The Panel notes that the Complaint failed to mention or to attempt to address critical points made in prior correspondence by the Respondent’s representatives. Particularly as the Complainant was represented by professional advisers, in these circumstances it appears to the Panel that these points were deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of this proceeding.