It left out a key detail in its case.
A French jewelry maker has been found guilty (pdf) of reverse domain name hijacking.
A. Augis and Arthus Bertrand filed the complaint against Mira Holdings’ domain name augis.com.
Mira Holdings said it registered the domain as an investment because it has many uses and is a common name.
Shortly after the UDRP was filed, Mira filed a lawsuit in Arizona asking a judge for declaratory judgment. Mira asked the World Intellectual Property Forum to dismiss the UDRP, given the legal proceedings.
The Complainant asked the panel to render a decision, saying that the Respondent was trying to evade a decision “which will in all likelihood be in the Complainant’s favor.”
If only the Complainant knew what was coming if the case proceeded, which it did.
The Complainant left out a key detail in its case that really irked the panelist: it was a previous registrant of the domain and let it lapse in 2013. The panelist was mystified that the Complainant didn’t initially mention this detail or address it in its supplemental filing.
In another ill-advised move, the Complainant misquoted a previous case, Haringey London Borough Council v. Host Master, 1337 Services LLC. It argued that domain registrants need to investigate the previous usage of a domain and whether a prior registrant still has trademark rights. It provided the quote:
A domain holder […] has a duty to investigate whether the prior owner of a lapsed domain name has any rights in the domain name in question [….] An Internet archive search would have shown Complainant’s prior use of the Disputed Domain Name and also of the continuity of those services under the current version of the Mark.
Panelist Nick Gardner said the actual citation is very different:
A domainer, especially one who has repeatedly abused the domain name system, has a duty to investigate whether the prior owner of a lapsed domain name has rights in the domain name of interest [….] An Internet archive search would have shown Complainant’s prior use of the Disputed Domain Name and also of the continuity of those services under the current version of the Mark
That’s a big difference.
Gardner noted:
In the present case the Respondent is a domainer but there is no evidence it has “repeatedly abused the domain name system”. Further in the above cited case, the domain name at issue had no conceivable meaning other than in relation to the complainant, the complainant was continuing to provide the services previously provided under the domain name at issue under another similar domain name, and no response had been filed challenging any of the points the complainant had made. The Panel is doubtful that in the present case the facts are such that the Respondent was under a positive duty to extensively investigate the previous use of the Disputed Domain Name or was in some way fixed with constructive knowledge of what that use was.
Gardner found in the domain registrant’s favor and that this was a case of reverse domain name hijacking.
Cabinet Herrburger represented the Complainant, and John Berryhill represented the domain owner. This is the third time these parties have squared off in a domain dispute.
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