They should have checked historical Whois records.
A World Intellectual Property Organization panelist has found that the maker of the Glovo app for delivery attempted reverse domain name hijacking of the domain name Glovo.com.
The Spanish company uses the domain name GlovoApp.com.
Glovo.com was registered in 2001, well before the app maker was founded in 2015. So the panelist found that the domain could not have been registered in bad faith to target the app maker.
Panelist Matthew Kennedy found that the complaint was brought in bad faith because of the dates, noting that the domain owner made Glovo aware of these dates before it filed its complaint.
But it’s here that the Complainant’s attorney made a mistake. Based on historical Whois records, it appears that the Chinese owner of the domain name didn’t acquire the domain until 2016. It was previously owned by a company in California and then Sedo’s DomCollect.
Per UDRP precedent, the Complainant could have shown that the domain was registered after the company was founded because of the transfer date.
It still would have had to show bad faith, which would have been difficult, but it would have cleared the hurdle that made its case dead on arrival.
Nonetheless, the fact that Glovo filed the case when it thought 2001 was the relevant date is indicative of filing the case in bad faith.
H says
Thats one more reason why WHOIS privacy is better for sellers, especially for the non-initial owners.
Charles Christopher says
Glovoapp.com has an enormous number of job openings listed on their site, and they are white collar jobs many on the high end.
So why would they hire a Tax Lawyer to defend them?
https://www.udima.es/es/profesor/maria-asuncion-rance-gimenez-salinas.html
C.S. Watch says
When you post articles which suggest that parties may legitimately file a UDRP if the current registrant is an aftermarket purchaser, and his or her purchase post-dates the trademark, then you should alert readers that, in this SPECIFIC dispute, the registrant, the registrar and the complainant are all non-US entities.
If US legal jurisdiction applied to this dispute, then the original 2001 date in the WHOIS would apply, per settled US law, and would render this UDRP dead on arrival. Any UDRP panelist failing to hold this line would be squarely in opposition to the raison d’être of the Policy, which is to unburden the courts…and would be walking complainants off the side of a six-figure cliff.
GoPets (GoPets v. Hise, 657 F.3d 1024, 1031-32 (9th Cir. 2011) and to AirFX (AIRFX.COM v. AirFX LLC, No. CV 11-01064-PHX-FJM, 2012 WL 3638721).
C.S. Watch says
If some UDRP panelist thinks the Ninth Circuit’s logical capacities are beneath their own:
“The original bill would have stifled legitimate warehousing of domain
names. The bill, as introduced, would have changed current law and made
liable persons who merely register domain names similar to other
trademarked names, whether or not they actually set up a site and used
the name.”*
“…as introduced, S. 1255 would in many ways be bad for electronic commerce,
by making it hazardous to do business on the Internet without first
retaining trademark counsel.”*
“…many start-up businesses may choose to abandon their goodwill and move to another Internet location, or even to fold, rather than risk liability.”* —
—*Congressional Record on ACPA Drafts, and https://cyber.harvard.edu/property00/domain/legislation.html
To elaborate, let’s say the law lacked the critical clause ‘as of the date of registration.’ We would just be left with ‘any distinctive mark.’ So if you’re a Delta company, formed eons ago, then what a windfall! Because the other 2000 Delta companies in this country would never be birthed. All those planes would be grounded. Entrepreneurs would be relegated to using asinine names like ‘Biktarvy.’ (Good luck, squirt!) The corporate dinosaurs backing the original ACPA draft were smacked down in the Congressional hearings, because the law detests monopolies. We welcome startups, we don’t want them strangled in the cradle.
The GoPets and AirFX holdings align with the Congressional Record—the original WHOIS registration date applies, domains are alienable, and ‘pre-dating the mark’ rights transfer, to even anonymous aftermarket buyers. This is the only correct interpretation, and the only fair application.
C.S. Watch says
Corr’n:
—*Congressional Record on ACPA Drafts. With more legislative background available at https://cyber.harvard.edu/property00/domain/legislation.html