Telepathy claims finance company is trying to reverse hijack a domain name it owns.
Telepathy, Inc., a company owned by domain name investor Nat Cohen, has sued Seattle company Parametric Portfolio Associates, LLC for alleged reverse domain name hijacking and other actions.
Parametric, a financial firm, uses the domain name ParametricPortfolio.com. Telepathy has owned the domain name Parametric.com since 1998.
Parametric filed a UDRP on Parametric.com at World Intellectual Property Organization last month. Rather than wait for a UDRP decision that cannot award financial penalties for reverse domain name hijacking, Telepathy decided to sue in U.S. District Court in Washington DC.
In addition to seeking a finding of reverse domain name hijacking and a $100,000 penalty for it, Telepathy is seeking declaratory judgment and findings of fraud and negligent misrepresentation.
Telepathy’s lawsuit alleges that Parametric misrepresented facts in the UDRP, including by saying that Telepathy “approached [Defendant] with an offer to sell the Domain Name for $225,000.”
According to the lawsuit (pdf), it was actually Parametric Portfolio Associates that reached out to Telepathy to buy the domain name. The suit says that the company submitted a $1,000 offer through the SecuredOffers.com site in 2014 but the parties were unable to reach an agreeable deal. As part of the process for submitting an offer on SecuredOffers.com, the party has to agree that it’s not claiming a legal right to the registration of the domain name.
This isn’t the fist time Telepathy sued a company that filed a UDRP against it before the UDRP was decided. Last year SDT International agreed to pay $50,000 to settle a lawsuit after it tried to get the domain name SDT.com through UDRP.
Telepathy is represented by David Weslow of Wiley Rein LLP.
Go get ’em!
I have always thought that a lot ,not all but many, of Complainants are sailing very close to the wind in terms of the lies and misleading statements they make in their claims Here in UK it could well be a criminal offence of attempting to pervert the course of justice which applies to civil as well as criminal proceedings where a false statement etc is made. It think I may well try that next time
Quite a few companies have used the term ‘parametric’ in many ways, well before these guys. A fishing rod company had a trademark on the term back in the 1960’s.
There are currently several active trademarks by other companies which contain the term. There are many more previous trademarks that are now ‘dead’.
Looks like Parametric Portfolio Associates filed for and received a trademark on Parametric in 2014. Another Washington State company (not sure if it is them) received a trademark in 2007 which was later cancelled in 2014.
Telepathy is in a very strong position here, imo.
Well done Nat, it’s time RDN hijackers start to pay the price for their groundless UDRP. 🙂
Well done Telepathy Inc. and their attorneys Wiley Rein for fighting against “the system”.
The worst toothless ICANN/WIPO can award is a naughty, naughty slap on the wrist, if that at most, with so many past controversial judgements (many of the judgements made by lawyers who normally represent trademark holders) and with RDNH decisions being so rare.
Rather than wait for a UDRP decision that cannot award financial penalties for reverse domain name hijacking, Telepathy has decided to sue in U.S. District Court in Washington DC over the Paramedic.com domain name.
In the past SDT.com case, Telepathy Inc. was represented by attorneys Wiley Rein who successfully got them $50,000 damages for filing a frivolous UDRP.
https://domainnamewire.com/wp-content/SDT-settlement1.pdf
Wiley Rein is also currently representing Granny Heidi Powell in the Granny versus the Heidi Powell the Celebrity case involving the domain name HeidiPowell.com seeking $100,000 damages
Reverse domain name hijacking alleged in HeidiPowell.com lawsuit.
https://domainnamewire.com/2016/09/13/reverse-domain-name-hijacking-alleged-heidipowell-com-lawsuit/
It should be interesting to see how that turns out and will serve as a deterrent from any other opportunistic Reverse Domain Name Hijackers that think that they can steal a domain name for the price of a UDRP filing fee.
Will ICANN change anything. Yawnnnnnnnnnnnnnnnnnnnnnnnn! They’re too busy making preparations for their next international conference in an exotic destination with the subject matter: “Revenue producing New gtlds”.
Yeah, wake ICANN and start protecting domain name owners also. Shame on you.
Good for Nat. David is the best when it comes to this.
Sterling. Yet another debt of gratitude to Telepathy. This sue-at-suspension approach should be liberally cited in decisions, WIPO advisories, etc. The threat of a 100K smack at filing must be broadcast to would-be complainants. Panelists and fora have a clear ethical duty to do so.
When the UDRP panelist rosters are so infested with opportunistic warbles that Registrants are forced to sue in Federal Court just to get the clear language of the law applied, then the UDRP has failed full circle in its mandate to unburden the courts. They will need wholesale roster purification by fire in every arbitration forum to remain viable.
And if it’s not obvious to those who are responsible for cleaning house, policing decisions, and for accrediting and electing clean panels, one easy earmark of a pay-to-play panelist is the refusal to find RDNH where a domain pre-dates TM. Skim past decisions for that glaring lapse of duty to start culling the corrupt.
The language is ‘shall find RDNH,’ not ‘shall use this chit to curry favor with future clients.’ No panelist was ever unclear on that point, they were just willing to 1) put coffee klatch kowtowing above ethics and duty, or 2) willing to pluck registrants bloody to feather their own nests.