There was an obvious flaw in this cybersquatting case.
A World Intellectual Property Organization panel has determined that ProjectPay Pty Ltd, tried to reverse domain name hijack projectpay.com.
The company uses the domains ProjectPay.com.au and ProjectPay.co.uk to promote its payment services for construction. It registered these domains in 2017 and later, and claims to have started offering its services in 2015.
But the case was dead on arrival because the registrant registered the domain in 2001. Therefore, the Respondent could not have registered the domain in bad faith to target the Complainant. The Complainant did not address these dates in its filing.
The three-member panel wrote:
The Panel finds that the Complainant in fact knew or at least should have known at the time that it filed the Complaint that it could not prove one of the essential elements required by the UDRP, namely, it is very clear that the Respondent registered the Domain Name many years before the Complainant came into existence, filed and registered the Trademark.
The Complainant (or rather, its attorney) must have been fully aware of the cumulative requirements of registration and use in bad faith when filing the Complaint. In fact, the Complainant has clearly confirmed that the Domain Name was registered in 2001 and has written under the heading “The Disputed Domain Name was registered and is being used in bad faith”: “The Respondent registered and is using the Disputed Domain Name in bad faith, pursuant to Paragraphs 4(a)(iii) and 4(b) of the Policy, and Paragraph 3(b)(ix)(3) of the Rules”. And concluded: “All of the Respondent’s activity described above clearly constitutes bad faith registration and use of the Disputed Domain Name under the Policy and the Rules on several established grounds”.
Dentons Canada LLP represented ProjectPay Pty Ltd and John Berryhill represented the domain owner.
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