Web design firm in Netherlands is a reverse domain name hijacker.
Web design firm Emazing B.V., which uses the domain name Emazing.nl, has been found to have engaged in reverse domain name hijacking over the domain name Emazing.com.
Amazingly, Emazing’s lawyers seem to have really shot themselves in the foot: they submitted a supplemental filing that was key to the RDNH finding.
The owner of Emazing.com registered the domain name before the complainant had a trademark for Emazing. But Emazing.com has been transferred among entities since then. At one point, Sony owned the business. It seems that the current owner was a founder of the business and bought it back from Sony at a later date.
In a supplemental filing, Emazing B.V. submitted an email from 2003 from the respondent to the complainant’s lawyer. It read:
“I just received your letter regarding the EMAZING.COM domain. We have operated an email newsletter publishing business @ EMAZING.COM since July 1998. Additionally, we hold a registered trademark on the term EMAZING in the United States. This mark (2316782) was granted by the United States Patent and Trademark Office on February 8, 2000.”
If you’re interested in extending an offer for the domain and trademark, we’re more than willing to listen. However, please know that the offer would have to be substantial.”
The first thing that I thought of when I read this was that the complainant just undermined its cased. Panelist Matthew Harris felt the same way, writing:
No attempt is made in the supplemental submission to explain why this email could not have been brought to the attention of the Panel in the Complaint. Accordingly, the Panel would have been entitled to simply ignore this material. In fact, for reasons that the Panel will go on to explain, the Panel has formed the view that this material even if admitted to these proceedings undermines rather than assists the Complainant in this case. It, therefore, is prepared to allow this into these proceedings.
This undermines the complainant’s case because it makes it clear that it knew of the trademarks and long history of the domain. It also shows that the complainant made the overture about buying the domain name. Finally, it begs the question why, if the complainant felt the respondent was cybersquatting, did it wait another 12 years before filing the UDRP?
The additional submission indeed was the sword the complainant fell on. Panelist Harris asked why the complainant didn’t address the trademarks if it knew about them. He also asked why the email was held back from the initial filing.
Harris sums it up by noting “the Panel concludes on the balance of probabilities that these proceedings were commenced speculatively with little belief that on any proper analysis they had a real prospect of success.”
The owner of Emazing.com represented himself, and seems to have done a good job.