This doesn’t bode well for its lawsuit.
Earlier this week I wrote that Weeds, Inc. filed a cybersquatting lawsuit over the domain name Weeds.com. The lawsuit was filed despite a pending UDRP it filed with World Intellectual Property Organization (WIPO).
WIPO just handed down its decision in that case. Unsurprisingly, it found that Weeds, Inc engaged in reverse domain name hijacking by bringing the case.
Weeds, Inc. did not mention the UDRP in its lawsuit. The lawsuit was filed before the decision was handed down, and the WIPO panel noted the suit in its decision.
The panel determined that the domain name was not registered and used in bad faith. It called into question the timeline of Weeds, Inc’s trademark applications occurring after the current owner purchased the domain. While Weeds, Inc. claimed common law rights it didn’t provide much evidence of them, especially for a generic term. In one of its trademark applications, it even disclaimed the word “weeds”.
The panel noted:
In the Panel’s view, it does not seem probable that the owners of a Caribbean company that purchases and sells generic domain names, and generates revenue from them through relevant pay-per-click advertising links, would be aware of a regional weed-control company and find their brand an appealing target for cybersquatting.
This should be obvious to more than just the panel.
It also turns out that a vice president of Weeds, Inc. inquired about buying the domain name in 2005. It failed to mention this in its complaint.
In finding reverse domain name hijacking, the panel wrote:
The Panel notes that Complainant is represented by IP counsel. Thus is [sic] should have been quite clear from the outset that Respondent had registered a domain name consisting of a common, descriptive, dictionary word, before Complainant filed its application for the WEEDS mark.
In addition, it is well established that invoking a common law mark – as did Complainant – requires providing the Panel with concrete evidence of secondary meaning / acquired distinctiveness, which Complainant failed to submit.
Lastly, while Complainant contended that Respondent registered the disputed domain name primarily to sell it to Complainant, it made no mention of the fact that it was Complainant’s Vice-President who had first contacted Respondent to make an inquiry about the purchase of the disputed domain name.
For these reasons, the Panel finds that the Complaint is an attempt at Reverse Domain Name Hijacking.
Why did Weeds, Inc. file a federal lawsuit when it knew a decision in the UDRP was imminent? You can draw your own conclusion.
Weeds, Inc. was represented by Technology & Entrepreneurial Ventures Law Group, PC. The domain owner Innovation HQ was represented by Zak Muscovitch of Muscovitch Law P.C.
Weeds, Inc. might have a higher legal bill than it expected. While a U.S. court doesn’t have to give deference to a WIPO decision, a judge would certainly question why it should let this case move forward in light of the decision. Some companies have paid for filing reverse domain name hijacking cases.