French company filed UDRP after failing to acquire domain name.
A World Intellectual Property Organization (WIPO) UDRP panel has found Paris asset management firm Tobam to have attempted reverse domain name hijacking.
Tobam filed a cybersquatting complaint against the owner of Tobam.com. The asset management firm uses the domain name Tobam.fr.
The owner of the domain name registered it along with many other surnames with plans to launch a surname email business. The business never got off the ground, but he registered the domain name before the complainant was in existence. This makes it impossible that the registrant acquired the domain name in order to cybersquat on the complainant’s brand.
What’s worse, and part of the reason the panel found Tobam to have engaged in reverse domain name hijacking, is that the domain name owner repeatedly asked Tobam for details on its trademark. During purchase negotiations on Sedo between 2011-2013, Tobam mentioned the trademarks to the domain owner. The domain owner said previous trademark searches did not reveal a trademark and asked for details on the trademark. He even offered to transfer the domain name for free if the trademarks predated his registration of the domain.
After failing to purchase the domain name, Tobam dug deep to find some unusual UDRPs in which the panelist determined that a domain name can be renewed in bad faith to meet the requirements of a UDRP. Even though these cases have been largely discounted, the circumstances of the primary cases were very different.
Panelist Adam Taylor determined this was a classic “Plan B” case of reverse domain name hijacking in which a complainant files a UDRP because they couldn’t buy the domain name for the price they wanted.
Tobam, the firm found to have engaged in reverse domain name hijacking, was represented by Cornet Vincent Segurel. The domain name owner was represented by Lewis & Lin.