Cyber security company tries to steal domain name through UDRP

Oh, the irony. A cybersecurity firm has been busted for trying to nab a domain name through a baseless cybersquatting claim.

Israeli company Cyberbit Ltd, a subsidiary of Elbit Systems Limited, has been found to have attempted reverse domain name hijacking over the domain name Cyberbit.com.

A World Intellectual Property Organization panelist came to this conclusion despite the domain name owner, Cyberbit A/S of Denmark, not responding the complaint.

This was either a case of very inept counsel, or an orchestrated case to get a domain name through UDRP that it could not purchase.

Cyberbit applied for a trademark in Israel in 2015. Cyberbit.com was registered well before that.

It appears that the owner of the domain name used it for a business for some period of time, even though it is no longer active.

The complainant used the following argument to try to prove that the domain owner lacks rights or legitimate interests in the domain:

(a) “the Domain Name comprises, in full, the [Complainant’s] trading name and trade mark”; (b) “there is no evidence that the [Respondent] has been or is commonly known by the disputed Domain Name or has acquired any trademark or service mark rights in it”; (c) “the lack of responsiveness of the [Respondent] and the lack of use of the Domain Name suggest that the holding of the Domain Name is no longer of interest to the [Respondent]”; (d) when the Respondent did operate a website connected to the Domain Name it was “a website that was ripping-off its customers and involved in monetary scams”.

The panel responded:

The Panel is puzzled by (b) above. In the Complaint the Complainant acknowledges that the Respondent has an email address connected to the domain name, ,1 and quotes from a website indicating that the Respondent has a company named Cyberbit A/S, which is also referred to simply as “Cyberbit”. True, the website from which the extracted quote was taken accuses the Respondent’s company of ripping off its customers, but quite clearly the Respondent’s company is (or was at that time) commonly known as either Cyberbit or Cyberbit A/S.

An ever bigger detriment to the complainant’s case was that it didn’t complete the section of the UDRP explaining how the domain was registered and used in bad faith. Even when prompted by WIPO to complete this portion, Cyberbit made merely vague references.

This is probably because it couldn’t show that a domain registered well before it started using the brand was registered in bad faith. Since the owner never responded to a purchase inquiry, the complainant may have hoped to slip one by the panel.

Panelist Tony Willoughby wrote the following in finding RDNH:

It seems difficult to believe that a member company of such a prestigious group of companies as that headed by the Complainant’s parent company could have deliberately set out to abuse the process by launching such a fundamentally flawed complaint. Nonetheless, it is the case that the original Complaint omitted the section dealing with bad faith registration and use. How did it come to be removed? Was it a conscious decision or an error? When the deficiency was drawn to the Complainant’s attention by the Center and the invitation to file an amended Complaint was taken up, why was the deficiency not properly addressed? The amendments were purely cosmetic.

The deficiencies must have been obvious to anyone remotely familiar with the Policy. The Domain Name was first registered in 2003 nearly twelve years before the Complainant acquired its registered trade mark rights. The Respondent through his Danish company, Cyberbit A/S, a payment processing company, was to the Complainant’s knowledge at the time of filing the Complaint using the Domain Name at least as long ago as 2008, seven years before the Complainant acquired its registered trade mark rights. None of the evidence relating to the Respondent’s use of the Domain Name supports any contention that the Respondent was at any time targeting the Complainant or its trade mark.

If the Complainant did not launch the Complaint (and pursue the matter by way of the amended Complaint) knowing that it was doomed to failure, a matter upon which the Panel comes to no concluded view, it was nonetheless, in the Panel’s view, at the very least culpably reckless as to the Complaint’s prospects of success and thus guilty of an abuse of this administrative proceeding.