Registrar defends domain name from attack by lighting company.
Domain name registrar Tucows has successfully defended the domain name hinkley.com, which is part of its expansive portfolio of surnames, from lighting company Hinkley Lighting, Inc in a UDRP.
The domain name was registered in 1996 and came as part of Tucows’ acquisition of NetIdentity.
The panel ruled that Hinkley Lighting failed to show that Tucows lacked rights or legitimate interests in the domain name and failed to prove that the domain was registered and used in bad faith.
In a win for domain name investors, the panel considered the length of time it took the lighting company to file the case (laches) and referred to an earlier case involving Frank Schilling:
In particular Complainant secured the domain name hinkleylighting.com in 1996 just months prior to the time that Respondent secured the disputed domain name hinkley.com. Complainant was thus aware of the domain name registration process but for whatever reasons chose not to contact Respondent for a period in excess of fifteen years regarding the disputed domain name while the Respondent conducted its business. Although laches is not expressly stated as an affirmative defense under the UDRP it is an equitable remedy in civil proceedings and the UDRP by nature can only offer equitable relief. Laches has been recognized as a proper defense in some UDRP proceedings where the facts are particularly supportive such as when a Complainant knows or should know of the existence of the Respondent and the Respondent’s bona fide use of the corresponding disputed domain name for a substantial period of time prior to seeking to have that domain name transferred. See The New York Times Company v. Name Administration Inc… The Panel feels that this case exemplifies the type of situation where laches is properly considered as a defense.
Tucows was defended by Bret A. Fausett of AlvaradoSmith, APC.
Bill Sweetman says
Our Personal Names Service surname domain portfolio has won about 20 UDRPs filed against it over the last 10 years, and not one of our surname domain names has ever been transferred to a Complainant without appropriate compensation.
You’d think by now that folks would get the message (or at least do their homework), but the UDRP threats just keep on coming. That’s fine by us; we are happy to keep on winning.
Andrew Allemann says
@ Bill Sweetman,
Congrats on another win. Yeah, it’s amazing how many lawyers haven’t figured out how to use Google to prepare for a case.
A domain like hinkley.com would be worth in the high five figures. Not everyone can afford to use a lawyer to defend against UDRP, so the chances are good for many powerhouse complainants to scare the owners and swindle the domain names from them. It is a shot in the dark, but in many cases it works, and it only affects the little guy. Good job, Bill. I hope the word will spread to WIPO lawyers who sometimes have no conscience.
The Public says
Squatting on peoples surnames is a good way to attract long term feuds. Don’t be so sure of yourself Bill Sweetman. The hits will keep coming and you will learn just how “worth it” it really is.