Panelist gets decision correct but doesn’t consider reverse domain name hijacking.
A World Intellectual Property Organization panelist has denied New Canaan, Connecticut-based Bankwell Financial Group in its cybersquatting complaint against Bankwell.com.
However, panelist Peter Dernbach did not consider if Bankwell engaged in reverse domain name hijacking by bringing the case. He probably should have.
The same owner has had the domain name since he registered it in 2003. Bankwell wasn’t formed until 2013 when three Connecticut banks merged.
The domain name registrant added whois privacy this year, and Bankwell pounced. It argued:
The Respondent acquired the Disputed Domain Name sometime between February 9, 2015 and April 14, 2015, and purchased privacy services after the Complainant had established its name and website under the BANKWELL trademark.
For good measure, the bank threw in the argument that “a renewal or transfer of a registration may, in some circumstances, be treated as a “new registration”.
Bankwell then argued:
Sometime after April 14, 2015, and after removing its name from the registration by putting a privacy protection proxy in place, the Respondent began using the Disputed Domain Name in bad faith, by modifying the related links and hyperlinks from non-bank related links and hyperlinks to the links and hyperlinks of the Complainant’s competitors and/or competitive services.
It makes sense that a parked domain name at Bankwell.com would show ads for banks. Perhaps Bankwell didn’t know this (or perhaps it ignored it), but the domain name had banking ads on it in 2008, well before Bankwell came into existence.
In other words, there’s no way this domain name was registered to target the bank formed in 2013. The ads on the pages were legitimate, too. The respondent took down the ads after receiving the complaint, and I think this was a mistake. He’s using the domain name based on the generic/descriptive words, which is a bona fide use.
So why no reverse domain name hijacking?
Bankwell uses MyBankwell.com for its website.
Mike Sallese says
They are a bank that is local for me (I do not use) that is also a public company (on NASDAQ worth $140MM) that I would think should be able to afford the domain if it was for sale.
Andrew Allemann says
Yes, the decision doesn’t mention anything about a negotiation to buy the domain name.
Can’t blame the complainant. This urdp system is a joke and why wouldn’t anyone try and steal a domain that they want. Most times the arbi”traitor” gives the name away. Obviously this arbi”traitor” IS AN IDIOT and was/is incapable of wrapping his brain around a name that was registered BEFORE a trademark. While Bankwell are scumbags as well why not try and steal what is not yours if the system is bent toward the complainant??? Fishing expeditions will continue as long as the system is broken.
Now with this new TPP agreement the US trademark parasites are trying to water down the domain registry system Cira.ca in Canada so they can steal Canadian .ca’s. If your trademark was registered after the .ca domain in question, Cira would tell you to GO SUCK DIRT. Obviously anyone that registered a domain name BEFORE a trademark did it in good faith without knowledge of a trademark that DID NOT EXIST.
Broken system bent toward the complainant with NO PENALTY FOR RDNH.
Why would you even care if it was a finding of RDNH? It doesn’t mean a thing to anyone. ZERO penalty.
John Berryhill says
It can be extremely useful after the proceeding is concluded, in raising the prospect of filing action against the complainant in order to seek a settlement of costs.
There are things which go on, that are not part of the public record of these things.
Andrew Allemann says
John, are you aware of such a settlement occurring without a lawsuit being filed in U.S. court?
There are many comments about UDRP panelists not even considering Reverse Domain Name Hijacking.
Can someone give a definitive answer, please.
The question is: “Is it a requirement of the UDRP that a panelist considers Reverse Domain Name Hijacking, even though it isn’t requested?”
Andrew Allemann says
My reading of the policy is that they are supposed to. Here’s a post on DNW from an actual panelist who believes this:
Ted Anderssen says
The respondent didn’t write the defense, nor quarterback it. Zak Muscovitch built the logical and honest strategy and rightfully won. This panelist read the facts and made a good decision. muscovitch.com in case you have an UDRP. Zak is intelligent and knows his domain law.
I had to use Zak once for a threatening email I received on a generic name. His response sent them retreating back into the hole they came out of. Thanks Zak!!