The dates didn’t add up.
A World Intellectual Property Organization panelist has found Titmouse, Inc. to have attempted reverse domain name hijacking.
The animation studio, which uses the domain titmouse.net, filed a cybersquatting claim against titmouse.com.
Based on the decision, it seems that Titmouse was frustrated about its inability to acquire the matching .com and filed the UDRP after years of trying to secure the domain.
The problem for Titmouse was that the domain registrant acquired the domain in 1998, two years before the Complainant was legally formed. (The Complainant had a trademark with a claimed first use date of 1992 but didn’t explain how it claimed first use before the company existed.)
Titmouse said it has been using a watch service through GoDaddy since 2003 to try to “re-claim” the domain. It also tried to buy the domain in 2008, but the parties didn’t come to an agreement.
The domain owner says he hadn’t heard anything from the Complainant since that failed 2008 negotiation.
Panelist W. Scott Blackmer found reverse domain name hijacking, writing:
…The Complaint entirely ignores the glaring difficulty that the Complainant must show bad faith in the registration of the Domain Name, which in this case preceded the existence of the Complainant itself as well as its registered marks. This issue is clearly addressed in WIPO Overview 3.0, section 3.8: “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.
There are specific cases where a complainant can demonstrate that a respondent anticipated the trademark registration; some of these could arise in circumstances where the mark had already acquired distinctiveness in common law while owned by a predecessor in interest. The Complainant offered no evidence of this, however. Instead, the Complainant made conclusory assertions “on information and belief” that the Respondent registered the Domain Name in bad faith, to demand an exorbitant purchase price from the (subsequent) trademark holder, prevent it from acquiring a corresponding domain name, or misdirect Internet users for commercial gain. A UDRP complaint is not notice pleading “on information and belief” that serves as a prelude to discovery and trial. The parties have a single opportunity to present evidence and argument, and in this instance the Complainant singularly failed to do so.
Titmouse was represented by Mandour & Associates. The domain owner represented himself.
[Note: WIPO released this decision last week, but I overlooked it until I received the Internet Commerce Association’s weekly UDRP roundup this week. If you’re interested in cybersquatting cases, subscribe to this newsletter.]