GoDaddy gets reverse domain name hijacking win

Complainant mistakenly referred to a Whois update date as the ownership date.

GoDaddy’s NameFind subsidiary has successfully defended its domain name smartcatch.com. A World Intellectual Property Organization panel found (pdf) that French company SmartCatch filed the case in abuse of the UDRP.

NameFind acquired the domain as part of a portfolio purchase in 2015, which was before the Complainant existed. That made the case dead on arrival.

SmartCatch claimed that the domain was acquired in 2023, citing an “updated date” in the Whois record.

The panel held SmartCatch to task for this error. In finding reverse domain name hijacking, it wrote:

In this case, the Complainant incorrectly submitted that the Respondent registered the disputed domain name on May 9, 2023, when it had in fact acquired the disputed domain name on December 21, 2015, being several months before the Complainant even claims to have acquired any relevant trademark rights.

While this submission could be viewed as a mistake, the Complainant is legally represented in this case and should have been aware that its Complaint could not succeed in circumstances where the disputed domain name was registered before it acquired any relevant trademark rights. The Complainant should similarly have known that the “Updated Date” in a WhoIs search does not by itself establish a transfer of ownership (if there would be other evidence such as a change in content that may support such a claim, but that is not the case here), yet there is no evidence of any enquiries it may have conducted concerning the ownership history of the disputed domain name.

Some panels dismiss this type of misunderstanding as just being a mistake of ignorance. However, panels need to hold Complainants to task for not understanding (or simply ignoring) the basics of Whois records.

The panel also noted that SmartCatch didn’t provide any evidence of its business profile or trading activities that might suggest NameFind was aware of the SmartCatch trademarks.

SmartCatch also admitted its reason for suddenly being interested in this domain name: it’s expanding to the United States, and the disputed domain name is prejudicial to those activities, as the Complainant will be unable to reference its goods and services as it would wish by reference to the “vocation commercial” disputed domain name.

The kicker? NameFind was only asking between €7,000-€8,000 for the domain name. Now, SmartCatch is out its UDRP filing fees and legal fees and still doesn’t have the domain name.

Selarl Oriamedia represented the Complainant, and Levine Samuel, LLP represented GoDaddy.