Panelists agree it was a “Plan B” UDRP filing.
HugeDomains has won a reverse domain name hijacking claim against Redgrass SA, with particularly scathing remarks from one panelist.
Redgrass SA sells tools for painting figurines and miniatures. It uses the domain RedgrassGames.com.
It filed the dispute against HugeDomains over redgrass.com. HugeDomains registered the domain before Redgrass had rights in the name.
Based on the record, it’s clear that Redgrass used threats of filing a UDRP as a negotiating tactic. It sent two legal threats to HugeDomains while trying to buy the domain.
Here’s how panelist Neil Anthony Brown described the letters:
In its letter of demand to the Respondent of February 23, 2021, which it calls its “formal” letter and in which it gave its whole case away in advance, its whole tenor is that it
holds registered trademark rights, which it did not at that time; that unless the Respondent lowered its price to an acceptable level, proceedings would be brought; that the price of the domain name showed that the Complainant “should legitimately own the domain name”; and that the Respondent had acted in bad faith, when the Complainant must have known that the Respondent had done nothing of the sort.
In its letter of March 1, 2021 letter, described as “another formal letter”, it changed its case to make the allegation not that it actually “held” trademark registrations, but that it “has pending trademark applications that will be registered…” (emphasis added). It also alleged that its name REGRASS had been registered and protected in France on December 9, 2015 by means of a company registration. But it omitted to state that its own evidence (Annex 1) showed (in the French language, although the proceeding is supposed to be in the English language, the language of the registration agreement) that the company that allegedly conferred this registration had been dissolved or deregistered in 2019; together with the ever present threat of proceedings if the price were not reduced. As a specific issue, the Respondent asserted that it had “strong unregistered rights, including Common Law rights” in REDGRASS, before the domain name was registered. Not only was this assertion unsupported by any evidence, but it was used to intimidate the Respondent within the meaning and ambit of the definition of RDNH.
All three World Intellectual Property Organization panelists agreed that this was a case of “Plan B” reverse domain name hijacking. In a concurring opinion, Brown said this was one of the most egregious attempts of reverse domain name hijacking.
Riccardo Ciullo of Spain represented Redgrass SA. No representative is listed for HugeDomains.