Company that owns TRTL.co.uk tried to get TRTL.com through UDRP.
Coolside Limited, a company that sells a travel pillow, has been found to have engaged in reverse domain name hijacking.
The company filed a UDRP with World Intellectual Property Organization against the owner of TRTL.com. It uses the domain name TRTL.co.uk to sell its reimagined travel pillow.
TRTL.com was registered in 2000. Coolside was incorporated in 2010 and started trading under the name “trtl” in 2013.
You can see the problem with its cybersquatting complaint.
A three-person panel ruled that it was impossible the domain was registered in bad faith given the timeline. It wrote:
A small minority of UDRP panelists has in the past attempted to construe subsequent bad faith use of a domain name as reflecting back to bad faith registration, notwithstanding no evidence of any bad faith actually operating at the date of registration. This Panel does not adhere to that theory. The UDRP policy is clear in requiring that a complainant must show both that the domain name was registered in bad faith and that it is being used in bad faith.
Even those panelists who have advocated such an interpretation of the Policy still require there to be some evidence that the domain name has been used in bad faith in a manner which indicates a change of behaviour or other specific targeting of the complainant and its rights. The Complainant has not brought any coherent evidence even of any such bad faith use in this case.
The panel cited three reasons the case was brought in abuse of the policy:
1. Coolside Limited ignored settled policy precedent around pre-trademark registration of domains, and that bad faith requires targeting.
2. The company didn’t even try to explain why ordinary precedent shouldn’t apply.
3. The domain name owner told the complainant this ahead of time and even pointed out a previous case involving the same domain name owner with similar facts in which the domain name owner won.
Coolside was represented by Burness Paull LLP. John Berryhill represented the domain name owner.
C.S. Watch says
Presiding panelist Ian Lowe lights a path that can be put to practical use by panelists. Panelists are sometimes reticent to find RDNH, and that has proved costly to complainants who have woken up in court.
In this dispute, ‘The Complainant “was told prior to filing that its case was baseless…” when the Respondent sent them his own past UDRP win. The panel found that to be “particularly inexcusable,”and found RDNH.
Clearly, there cannot be a duty placed on respondents to train and explain the Policy to complainants. And clearly, complainants will have sought out the respondent’s past UDRPs. (That fact is indisputable if the complainant has representation.)
So it follows that:
IF: The instant respondent prevailed in a prior UDRP dispute because the domain registration predated the trademark,
THEN: a complainant whose mark does not predate the domain has received notice that they cannot prevail and have therefore engaged in RDNH.
In finding RDNH, the TRTL.COM panel states: “In light of the foregoing, this panel concludes that ‘the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP’—bad faith registration and use. WIPO Overview 2.0, paragraph 4.17.”
It is a truth universally acknowledged that everyone usually loses in these sort of cases. Everyone that is, except the Complainant’s attorneys.
1) The Respondent incurs costs to defend the case adding additional costs if opting for a three party panel.
2) The Complainant gets named as Reverse Domain Name Hijackers. Not exactly good for the reputation.
The Complainant doesn’t get the domain name they want, but they still probably want to acquire it. The bad news for them is that after a failed UDRP case initiated by a Reverse Domain Name Hijacker it is likely the price just went up.
Unless they take cases on a no-win-no-fee basis, the only party that seems to win in these cases is the Complainant’s attorneys who get their fees. Nice work if you can get it.