Complainant loses cybersquatting dispute but panel doesn’t find RDNH.
Van der Graaf Inc. lost a UDRP cybersquatting dispute over the domain name VDG.com, but the panel stopped short of finding the company guilty of reverse domain name hijacking.
A three-person World Intellectual Property Organization panel determined that Van der Graaf did not show that the domain was registered and used in bad faith. When it filed the case it believed the domain name transferred owners after the company started using its trade name in 2018. The respondent proved that he registered it in 2017.
Even if he had registered it afterward, the panel would have considered the value of the domain name as a three letter domain. Van der Graaf tried to argue that VDG was unique to its company:
Moreover, the Respondent would have been aware that VDG is neither a descriptive term, nor a common three-letter acronym used by many third parties for a variety of services, but the specific trademark in which the Complainant had established rights. A simple search of the Canadian trademarks database reveals that the Complainant is the only applicant for the VDG trademark. Similarly, a search of the European Union trademark database reveals that the Complainant is one of only two registrants of the VDG trademark for unrelated goods and services, while a search of the United States trademark database reveals that besides the Complainant there are only two registered owners of the VDG trademark for unrelated goods and services. According to the Complainant, these circumstances show that the Registrant had targeted the VDG trademark of the Complainant.
This argument undermines the idea that it is the sole owner of VDG. The are other companies using VDG. When I search on Google in the U.S., the first page of results relate to two other firms that use the acronym VDG.
Ultimately, the panel cited the change in Whois record and the Complainant’s belief that the domain had changed hands after it starting using its name as a reason for not finding reverse domain name hijacking.
Piasetzki Nenniger Kvas LLP represented the Complainant. Wiley Rein LLP represented the domain name owner.