Company wanted G81.com domain name but the panelist says the clothing company tried to mislead it.
A National Arbitration Form panel has found clothing company Guess (NYSE:GES) to have engaged in reverse domain name hijacking over the domain name G81.com.
Guess filed a complaint arguing that the owner of the domain name was cybersquatting with the domain name. The owner of the domain name bought it, as well as many other three character domain names, as an investment. At the same time he acquired the domain he also acquired g83.com and g87.com.
The owner of G81.com said he had never heard of Guess’ G81 mark, which Guess says it has been using on its clothing since at least 2001. You can understand why the domain owner couldn’t find it; search for G81 on Google and you won’t find Guess on the first page. Amusingly, search for G81 on Guess.com and you’ll get this result:
The domain owner also called three Guess stores and the company’s national call center to inquire about the product and was told that they don’t carry a product by that name.
He asked the complainant to show him how the brand was being used and was stonewalled.
In finding reverse domain name hijacking, the panelist noted:
…from the outset, Respondent squarely put the question to Complainants, which the Panel now paraphrases as asking: “How can I have intentionally targeted your G81 branded products, when we can find no such products on the market? Tell us which of your products are offered under the G81 mark, which are said to have put us on notice of your rights in the Mark?” From that time forward, Complainants have, in the view of the Panel, “stone-walled” the Respondent, rebuffing this relevant and material question with the reply: “Complainants are neither required nor obligated to show how they use the G81 Mark”.
Respondent’s submissions have shown that despite repeated calls by Respondent for Complainants to specify and identify exactly what products and services Complainants offer in commerce in connection with the G81 Mark, which might have put Respondent on notice of Complainants’ Mark, Complainants have continuously failed and refused to do so, and have largely ignored and failed to so much as acknowledge Respondent’s focused inquiries.
In its Additional Submission, Complainants berate the Respondent as having “fixated on irrelevant issues”, and criticize what Complainants refer to as “Respondent[‘s] attempts to cloud the issues” and for “dedicating the majority of its response to irrelevant purported facts and arguments which have no bearing on the present UDRP proceeding.” Complainants conclude: “Respondent’s attempts to mislead the Panel should be disregarded, and the subject domain name should be transferred to Complainants.”
Panelist David L. Kreider found that it was actually Guess that tried to mislead the panel.
Guess tried to acquire the domain name in 2013. Negotiations broke off after the parties didn’t agree on a price. Five years later (and 14 years after the domain owner acquired the domain) Guess filed the cybersquatting complaint.
All of these factors contributed to the panelist finding that GUESS? filed the case in abuse of the policy and reverse domain name hijacking.
Update: a reader pointed out that Guess’ counsel, Gary J. Nelson of Christie, Parker & Hale, LLP, is also a WIPO panelist for UDRP and has heard 82 cases. In other words, a UDRP-accredited panelist was found to have brought a case in abuse of the policy.
Joseph Peterson says
Seems obvious that Claimants need to start putting up a $25,000 USD deposit into UDRP escrow to be awarded to the domain owner in the event that bad faith is found. Otherwise, how is the the domain owner going to get paid for his legal troubles? Realistically, is the domain holder now supposed to sue the international Guess Corporation to recover? Get real. Presently, this system is not equitable.
As the new .crap extensions continue their nosedive towards worthlessness and oblivion, there will be more of a strongarm effort from large companies to steal valuable .com names from those who lack the resources to defend themselves. Hoping this disturbing trend gets reversed before it is too late.
Excellent point. There needs to be some teeth put into those found guilty of reverse domain name hijacking.
The conflict of interest of a panelist bringing a case and being found guilty of RDNH is revolting and further undermines WIPO.