Company files cybersquatting complaint on domain registered well before it existed.
Cruise booking company Dreamlines GmbH, which has raised over $37 million in investments, has been found to have attempted reverse domain name hijacking for the domain name Dreamlines.com.
It’s a classic case: a company is founded after a domain is registered. It tries to buy the domain name it wants but fails. So it files a cybersquatting complaint under the Uniform Domain Name Dispute Resolutions Policy (UDRP).
Of course, UDRP can’t be used to obtain a domain name that was registered by its current owner prior to the complainant having trademark rights in the name.
In this case, the very earliest the complainant could try to claim for using the Dreamlines mark was 2009. The domain name was registered in 1997.
World Intellectual Property Organization panelist Andrew D. S. Lothian noted:
The Panel notes that the Complaint was launched following the Complainant’s unsuccessful attempt to purchase a domain name that cannot be considered to have been registered in bad faith given the significant extent to which its creation date pre-dates the Complainant’s registered trademark and even the existence of the Complainant itself. On those facts alone, this case might be considered to be a typical example of Reverse Domain Name Hijacking.
The Panel is satisfied that the Complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed.
Dreamlines GmbH uses Dreamlines as a second level domain under a number of ccTLDs, such as Dreamlines.fr.
And, what happen to those who are guilty of hijacking? Do they get a fine? Should they be accuse of extorsion in a criminal court? It was done in bad faith.. they should be penalized for sure. And , lawyers who took part in this…should they know first that their clients should meet a min of criteras before even filing an UDRP. For sure, those lawyers did a very bad job for their clients. They should also be band from the UDRP process and learn how it work first. The registrant should sue them back.
They should walk the plank!
C.S. Watch says
1. There are a several options that promote reform: http://www.eckertseamans.com/wp-content/uploads/2015/11/Jacobs-Meadway-CommercialDamagesDec2011.pdf.
2. Post the particulars of the dispute, and the name of the Complainant’s attorney and law firm, on lP law sites. Include law blogs, tech news sites, relevant social media, and include outlets in the region of the attorney’s accreditation.
3. Redirect the domain itself to a plain webpage reporting the offense:
“Violation of federal statutory law, 15 U.S.C. 1114(2)(D)(iv).
Violator: Dreamlines GmbH
Field of Trade: Travel services
Headquarters: Hamburg, Germany”
4. After the dispute, blacklist the Complainant, or do not sell without attaching a penalty which ‘at least’ reflects the USC’s injunctive relief for legal fees and RDNH. Several rulings (AirFX, Paris, GoForIt) have hewed to $100K.
If you take a formal approach, it is easier for attorneys with unethical clients to make clear that breaking this law is commercially dangerous and can make the domain permanently unavailable to them.
John Berryhill says
“If you take a formal approach, it is easier for attorneys with unethical clients to make clear…”
It is easier for many attoneys to cash a check.
In many instances, it is the attorney selling the client on filing a UDRP, rather than the other way around.
The other part of it is failing to give straight advice.
I do represent complainants in cases I believe appropriate and for which the policy is intended.
I get a lot of calls from trademark owners asking if I’d file a UDRP for them. I assume they are looking for an honest assessment of their case. If it’s not an appropriate case, then I don’t mind being the bearer of bad news, but I’m sure there are a lot of lawyers who would just as soon tell people things they want to hear in order to cash a check.
C.S. Watch says
1997 domain, 2012 mark, there was no choice but to find RDNH.
But there’s a serious flaw in this correct decision. The Panel discusses at length the conceived override of domain registration dates by ‘potential mark rights.’ Oddly, this issue isn’t raised at all by the facts of the dispute.
Such a position is contrary to UDRP majority precedent, which denies standing to a Complainant who has only a USPTO ‘intent-to-use’ filing which predates the domain. The Complainant must have, if not a registered trademark, then common law mark rights which predate the domain. (As with the ACPA.) That does not mean trade naming, it means clear evidence of bona fide ongoing sales transactions, dating back to before the domain was registered. http://iplegalcorner.com/no-standing-for-intent-to-use-applications/.
But in this Dreamlines decision, the Panel states, ’However: In certain situations…’ a panel might protect ’potential complainant rights.’ Potentialities? Will there be an MRI to confirm that the Complainant was ‘really sure’ about using the name later? Will we be deposing every Ma Winkelvoss on how the twins always follow through on early brainstorms? Do we need an SEC for insider naming to police the big-eared waitstaff at Buck’s Woodside? What a fool the UDRP would make of itself from an evidentiary standpoint. Why don’t we just put a micrometer up to the Complainant’s pouty bottom lip to determine the fate of these million-dollar assets?
That is not just a slippery slope, that is a luge track for abuse. Muddy discretion like this is wholly inappropriate in the UDRP. The UDRP ‘streamlines’ due process rights, and that demands clear lines.
There was recently a dispute in which a respondent registered a domain four months after a student team used the word in a school contest (Nanotemper). Such ‘good’ cases sometimes make bad law—but the Czechs do not play, and they handed down RDNH. And that was a righteous decision. The students didn’t form a corp until a year later, and didn’t have any mark registration until another year after that. The fact that you DID NOT register the domain? That is simply more evidence that you didn’t have a bona fide use in commerce at the time. If we don’t hold the bright line, cute kids like this will end up owing 100K in injunctive relief under the ACPA before they’re even out of school.
Should be added to http://www.hallofshame.com website.
It’s a shame that http://www.hallofshame.com hasn’t been updated for a while.
I guess filing a trademark is equally as important as domain name is.
Gao Jing says
Though panel does find Rdnh against Dreamlines. Maybe talked about the other issue because complaint raised it. It doesn’t affect the right outcome of this dispute.