Company goes after rival’s “conquest” domain names.
DealerX Partners, LLC, a company that helps automobile dealers market to consumers, has been found to have engaged in reverse domain name hijacking over the domain names ConquestAutomotive.com, Conquest.email and Conquest.marketing.
In the car industry “conquest” is a term used to refer to winning over a customer that drives a competitor’s car. You will often see promotions on car websites that include “conquest cash” or something similar in which the manufacturer offers discounts when a buyer owns or leases a competitive vehicle.
The domain owner uses the .com domain to market its auto advertising services.
DealerX apparently offers services under the Conquest name. But it failed to mention to the panel that the term is common in the industry. It also didn’t mention ongoing legal proceedings with another party to cancel DealerX’s Conquest Service mark. In finding reverse domain name hijacking, the panel noted “we have a prime example of material evidence omitted from the Complaint”. The panel also noted:
The Complaint also alleges, without evidence, that its mark has acquired renown. Complainant’s essential argument is that Respondent cannot possibly have a legitimate interest in the Domain Names because: Complainant holds a registered mark, and any use of “conquest” in the automotive software field is trademark infringement and per se illegitimate. This position has been roundly rejected by the Panel in this case, based in part on the fact (also undisclosed in the Complaint) that the word “conquest” has a special meaning within the argot of automotive marketing.
DealerX was represented by Phillips Ryther & Winchester. The domain owner was internally represented.
This is the second failed UDRP for DealerX:
http://www.wipo.int/amc/en/domains/decisions/text/2017/d2017-0488.html
Their principal, Jeffrey Tognetti, has a prior conviction for securities fraud.
FYI, Mr. Tognetti won this case RoiQ.com ultimately As The domain was transferred by the federal court system to him, and his legal fees were ordered to be be paid. UDRP “judges” often do a poor job and don’t understand the law around registered trademarks. There was no reverse domain highjacking in either incident.
Jeez, remind me to never retain Phillips Ryther & Winchester as my trademark or domain name attorney. Completely wasted their client’s time and money on a UDRP that was filed in bad faith from the get-go. Plus, they lost the ROIQ.com UDRP too. I’m not sure they know what they are doing. I’ll be sure to take a pass on using them.
Naive.. who own RoiQ.com now? The federal court system upheld the trademark and made the “person it was purportedly” hijacked from pay Jeffrey’s company’s legal fees.
Thanks for the update!
http://www.circleid.com/posts/20180813_challenging_udrp_awards_in_federal_court_recent_outcomes/
Ironically, Dealerx prevailed in federal court because the domain name holder created the circumstances that led to its losing the domain name. (In fact, defendant must have realized it had no defense to trademark infringement and saw no point in making an appearance. The judgment was entered on default). If only the defendant had continued using the domain name as it had before it learned of Dealerx there could not have been a claim for trademark infringement. The self-destruct happened this way: “upon learning of plaintiff’s mark” it attempted “to improperly extract profit from plaintiff.” Dealerx proved its case by
submission of an e-mail chain between plaintiff and defendant showing defendant attempting to extract a high price from the plaintiff for purchase of the domain name… Defendant further demonstrated bad faith by asserting that he tried to create consumer confusion by placing content on the website associated with his infringing domain that mirrored the plaintiff’s business model… Defendant’s actions after being made aware of his infringement are relevant to the bad faith analysis.