Company omitted key details in cybersquatting filing.
Dewberry Engineers Inc has been found guilty of reverse domain name hijacking (pdf) after omitting key details in a UDRP.
The company filed a cybersquatting complaint against JKDewberry.com. The domain is registered to Dewberry Group, which is owned by John K. Dewberry.
Based on those details alone, this case was doomed from the start. But it gets worse.
Dewberry Engineers failed to disclose in its case that it has a long-running dispute with the Respondent. It sued the Respondent in 2006 over trademarks and the parties settled the next year, spelling out how the Respondent could use his last name as a mark. In 2020 the Complainant sued the Respondent for violating the agreement and won summary judgment. The Respondent has appealed that decision.
In finding reverse domain name hijacking, World Intellectual Property panelist Ingrīda Kariņa-Bērziņa wrote:
The Panel finds that Complainant has provided incomplete material evidence by failing, in its Complaint and Amended Complaint, to mention the litigation between the Parties and remaining silent on its extensive knowledge of Respondent, its trademarks containing the word “Dewberry”, Respondent’s controlling shareholder John K. Dewberry, and the numerous entities related to Respondent containing the name “Dewberry.”
In the Amended Complaint, Complainant states that “Respondent should be considered to have no rights or legitimate interests with respect to “Jkdewberry.com” because Jkdewberry is not a registered trademark or service mark, and it appears to have no associated registered company. A Google search of Jkdewberry, attached hereto as Annex No. 7, does not return any results connected to Respondent.”
The Panel notes that the record contradicts Complainant’s professed ignorance. To name but one example of evidence presented by Respondent, in a discovery request in the course of civil proceedings that predated this proceeding, Complainant had requested information on Respondent’s use of “jkdewberry,” a term identical with the disputed domain name. Instead, Complainant proceeded as if Respondent were a party unknown to it. If Respondent has not provided a Response, the Panel would have considered an entirely different case. See, for example, Rillius Holding Limited v. Yuliia Makovska, Abudantia B.V., WIPO Case No. D2022-2242; Green Globe Limited v. Domains By Proxy, LLC / Green Globe LLC, WIPO Case No. D2020-1822.
Based on this record, there can be no doubt whatsoever that, by the time that the privacy shield was lifted, Complainant was aware of Respondent’s identity and of its possible rights in the disputed domain name.
Only upon receiving the Response did Complainant recall these circumstances. Complainant is represented by counsel that will be aware of the professional representations of Parties and their counsel initiating such proceedings.
The Complainant did try to withdraw the case, but after facing objections from the Respondent, it dropped this request.
The panelist has made some questionable decisions before and failed to find reverse domain name hijacking in the slots.net case. So it’s good to see the decision in this case.
McCandlish Lillard, P.C. represented the Complainant, and Wellborn, Wallace & Mullman LLC represented the domain name owner.
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