Company filed two cases against the same business. Both were doomed to fail.
Descon Engineering Limited of Pakistan has been found guilty of reverse domain name hijacking for the second time. Both UDRP cases involved the same domain name owner.
Earlier this month, World Intellectual Property Organization (WIPO) published a decision by panelist Scott Blackmer for the domain desconllc.com. A few days ago, WIPO published a decision by panelist Robert A. Badgley for the domain desconautomation.ae.
The domain names are owned by Descon Automation Control System LLC, a company in the UAE that has been using the brand since 1994.
It turns out that the Complainant was a customer of the Respondent for a few years and didn’t complain about the name back then.
Also, in pre-dispute correspondence, the Respondent made the Complainant aware of its longstanding use of the domain and reminded it of the previous customer relationship. The Complainant still filed the case.
In the second case, Badgley wrote:
After learning the foregoing information about Respondent, Complainant should have known that, whether it still had a viable trademark infringement or other action at law against Respondent (the Panel offers no view on that issue), Complainant clearly had no viable case against Respondent under the Policy. Put another way, after receiving Respondent’s communication in August 2022, Complainant should have known that a complaint would be foredoomed and hence should not be pursued.
While filing these cases was improper, it’s worth noting that both cases were filed on the same day, so the Complainant didn’t file the second case after losing the first.
United Trademark & Patent Services represented Descon Engineering in its UDRP filings.
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