Domain owner forced to defend himself twice despite unchanged facts.
A company that sells an organic fertilizer has been found guilty of reverse domain name hijacking after filing a UDRP for the second time.
GBI Prosperities Pty Ltd. and Dr Grow It All Sales Pty Ltd. filed the UDRP against the owner of doctorgrowitall.com and drgrowitall.com. The domains are registered by a former business associate.
One of the complainant’s principals, Danny Hood, filed a UDRP over DrGrowItAll.com in 2013. He represented himself, and the panelist in that case noted that Hood really phoned it in. The panelist said the complaint “barely” met the qualifications of a UDRP filing.
The complainants said there were a few reasons it should be able to refile the case. One is that the second domain was added. Another is that it wasn’t represented by counsel the first time and that its initial case was so poorly presented it should have been rejected as an invalid case. The third is that the complainants are different because the first time it was an individual and now it’s a company.
The facts of the case did not change between the two filings.
Panelist Warwick A. Rothnie noted that the respondent had to defend himself twice thanks to the refiled complaint, and found the complainant to have filed the dispute in bad faith.
This case might make for a new type of RDNH category at RDNH.com — refiling cases.
David K says
Weren’t these domains really registered in bad faith?
Regardless of how we may all feel about UDRP, let’s say we were all in the exact same circumstance. Let’s had an ex-employee or business partner go around registering domains or other properties based on IP we developed.
More than likely, we’d all have .com covered, but we could well not have every new ccTLD covered.
Also, we know better than to go register nike.website, domainnamewire.news, or what have you, even if it is open.
I’ll admit, I don’t know the intricacies of UDRP first hand, because I’ve been lucky enough (knock on wood) to avoid the whole thing the past decade or so. But it would seem that fair regulations would account for circumstances like this. Obviously the owner of “Grow It All” is not the most tech savvy person, but that doesn’t mean his work should be hijacked, and duplicates or close derivatives later ransomed, either.
In the US you have automatic trademark rights to any name you successfuly use that doesn’t violate any other current trademarks. Mere usage gives you rights. There’s also trade secret protections and a variety of other laws to protect companies against acts like this from former employees and partners. I think Australia is a file first trademark country, but it would still make sense to protect the expression of whomever originates a piece of creative or intellectual property.
In any case, this does seem significantly different to me than true bad faith filing of UDRPs. I feel bad for the business here that’s having an ex partner or employee take ownership of the companies IP in a different or new mediums. That just doesn’t feel right in terms of basic ethics and conduct.
Andrew Allemann says
It has to be registered in bad faith, not just used. So if he originally registered it without malice (say, at the direction of the company) then it wasn’t in bad faith.
You’re right that this is very difference from other rdnh. Bit the complainant should have known it couldn’t refile this case.
I just made a post there that I noticed had significant typos upon re-read.
I registered for a Wordpress.com account specifically so I could edit it, but now I don’t see the post. Any idea where I can find it, so I can correct it? Thanks
Please delete / don’t publish this post, btw. 🙂