Counsel for domain owner warned Complainant last year that a UDRP filing would likely result in a reverse domain name hijacking decision.
A three-member World Intellectual Property Organization (WIPO) panel has found HBA Holding LLC guilty of reverse domain name hijacking for the domain ITDC.
It’s not entirely clear the connection between HBA Holding and IT Data Consulting, LLC, the company from which HBA Holding says it was assigned a trademark for ITDC. IT Data Consulting uses the domain name IT-DC.com.
Internet Tool & Die Company owns ITDC.com. It’s a technology company making a play on the offline world of Tool & Die companies, which create the building blocks of machines used in manufacturing. The company creates software for managing IP addresses, a building block of the internet. It acquired the domain name ITDC.com for about $15,000 in November 2018.
The WIPO panel determined that HBA Holding withheld critical information from its complaint. HBA Holding said that it sent a demand letter to the Respondent in 2019, but didn’t mention that the Respondent immediately replied to that letter disputing the Complainant’s claims. An attorney for the Respondent said that a UDRP filing would likely result in a reverse domain name hijacking decision.
The panel also called out the Complainant for hypocrisy. The Complainant said that the domain owner acted in bad faith by using Whois privacy, but IT Data Consulting also uses it for its domain!
Perhaps the most appalling part of the case is that the Complainant claimed that a business by the Respondent’s name didn’t exist at the address it uses. It made this claim even though it knew that the Respondent is a subsidiary of a business that was on the office door:
While Complainant could not find a listing for Respondent on an office door in the building whose address is used as the physical address of Respondent, the door of the alleged office, a picture of which was provided by Complainant, includes the name of Respondent’s parent company Denuo, Inc. What is notable is that Respondent in its March 8, 2019 letter specifically advised that Respondent was “a wholly-owned subsidiary of Denuo, Inc.” It thus seems surprising to the Panel that Complainant would now claim with certainty that Respondent does not exist and that its “sole reason for existence is to draw web traffic from Complainant” even though it found a listing for Respondent in the building directory and a sign on the door of Respondent’s alleged office for Respondent’s parent company Denuo, Inc., a company that is readily found in an Internet search.
In finding reverse domain name hijacking, the panel wrote:
After over 20 years of UDRP jurisprudence, Complainant clearly ought to have known that it could not succeed under any fair interpretation of the facts reasonably available prior to the filing of the Complaint and that basing its complaint on the barest of allegations without any supporting evidence on what is essentially a trademark infringement dispute was doomed to fail and an abuse of the UDRP process (WIPO Overview 3.0, section 4.16). As presciently predicted by Respondent’s counsel in his reply to the March 2019 demand letter, “a UDRP filing under the circumstances presented here would likely result in a reverse domain name hijacking finding against your client.”
Brown Patent Law, PLLC represented the Complainant in its reverse domain name hijacking case. Hyland Law PLLC represented the Respondent.