Descon Engineering Limited tries reverse domain hijacking

It tried to use UDRP to resolve a trademark dispute, not a cybersquatting dispute.

Descon Engineering Limited has been found to have engaged in reverse domain name hijacking in a dispute over desconllc.com. The company uses the domain descon.com.

The dispute the company filed is a trademark dispute, not a cybersquatting dispute under the Uniform Domain Name Dispute Resolution Policy.

The Respondent is Descon Automation Control System LLC, a company in the UAE that has been using the brand since 1994. The Respondent argued the two companies offer different services. In fact, the Complainant was a customer of the Respondent for a period of time.

Clearly, the Respondent registered the domain for a real business, and UDRP is not designed to resolve cases like this. If there’s anything in dispute, it’s trademarks, not whether the domain was registered as cybersquatting.

World Intellectual Property Organization panelist W. Scott Blackmer wrote (pdf):

The Complainant was well aware of the Respondent’s long-term business under the “Descon” name and the corresponding domain name. Indeed, the Complainant’s entities in UAE had done business with the Respondent over a period of several years, long after the Respondent registered and began using the disputed domain name, including corresponding with the Respondent by email using the disputed domain name. The Complainant did not mention these facts in the Complaint or more than cursorily address the obvious impediment to the second element of the Complaint: because the Respondent registered a domain name corresponding to its existing business name, the Complainant would have to demonstrate the probability that the Respondent chose its business name illegitimately in 1994, in an effort to exploit the Complainant’s mark. Yet the Complainant offered little to show that its mark, unregistered in UAE at the time, was nevertheless known to the Respondent and that the Respondent likely targeted the mark when the Respondent set up its company in the UAE in 1994. The Parties have done business together at times over the years since, and it was nearly 30 years before the Complainant decided to characterize the disputed domain name as an instance of cybersquatting. It appears more a case of RDNH, especially at this remove of time. Accordingly, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at RDNH.