“Ah, Puket, let’s file this case and hope they don’t show up.”
Clothing company IMB Textil S.A., which uses the domain name puket.com.br, has been found guilty of Reverse Domain Name Hijacking (RDNH) for trying to steal Puket.com through UDRP.
Frank Schilling parked the domain name Puket.com, an alternative spelling of Phuket in Thailand, and it showed links related to to island.
IMB Textil filed the UDRP after initiating purchase negotiations with Schilling, likely through DomainNameSales.com.
Schilling did something smart. When negotiations broke down and IMB Textil started talking about UDRP, his company wrote back:
I am sorry we were unable to come to agreement about this domain name. “Puket” is a common spelling of a well-known resort island in Thailand, and the owner has used the domain name to advertise Thailand travel for a very long time. The owner does not believe use of the domain name as a common geographic indicator has anything to do with your claimed trademark, and looks forward to addressing your UDRP complaint if necessary.
This became important to the panel in finding reverse domain name hijacking, and it’s a good practice for domain name owners. I’ve never been on the receiving end of a UDRP filing, but I still take precautions. Whenever I think a buyer might actually be someone trying to get ammo for a UDRP, I take a screenshot of the parked page to use as defense. I also take notes about what the potential buyer told me, if our conversation was over the phone.
The panel questioned why IMB Textil didn’t address the use of Puket.com to provide links to topics related to the place, even after being advised of this defense:
Thus, the Complainant was warned before it filed the Complaint what the Respondent’s defence would be. Having received that warning, the Complainant could have taken fairly rudimentary steps to investigate the Respondent’s claims. At a minimum, it could have verified how the disputed domain name was in fact being used. A properly advised complainant should also have taken steps to investigate the claim that the Respondent had been using the disputed domain name in an unobjectionable way “for a very long time”. For example, The Wayback Machine maintained at “www.archive.org” is a well-known resource which can often provide some indication about how a domain name has been used at points in time in the past.
It gets better. IBM Textil’s UDRP filing included an exhibit that was supposed to be a “gotcha” of bad faith through an offer to sell the domain. It accidentally included correspondence with its attorney in which they discussed their goal of getting a price so they could file a UDRP because respondents often don’t “show up”.
Perhaps the company and its Swiss law firm Kirker & Co Ltd should have googled “Name Administration” before deciding on this strategy. They would have discovered that Frank Schilling always “shows up”. With John Berryhill, no less.