Company says it has a Plan B before filing a Plan B reverse hijacking case

Also, it claims a domain can “degenerate” into a bad faith registration.

Just when you think you’ve seen it all: a company literally told a domain broker it had a “Plan B” before filing a Plan B reverse domain name hijacking attempt.

A World Intellectual Property Organization panel found (pdf) Skytree B.V. guilty of reverse domain name hijacking for a case it filed against skytree.com.

The company uses skytree.eu for its business selling a carbon capture technology.

In September last year, it used GoDaddy’s domain brokerage service to inquire about buying skytree.com. The next month, the Complainant asked the broker how long it might take to receive a response and that it was looking at “a plan B” to deploy before the end of November.

That Plan B was apparently filing a cybersquatting dispute under the Uniform Domain Name Dispute Resolution Policy.

Panelist Adam Taylor summarized the Complainant’s contentions. They will likely be amusing to people who follow UDRP cases closely:

• a “.com” address is more suitable for the Complainant than a “.eu” one given that the Complainant’s International Registration designates the U.S.;
• the Complainant has not made a bona fide offering of goods or services as it has not used the disputed domain name since 1998 other than to offer it for sale;
• the disputed domain name has “degenerated” into being registered and used in bad faith in that the Respondent is blocking other interested parties, especially the Complainant, from using the disputed domain name for their own bona fide offerings, including in the U.S.;
• the failure of the Respondent to react to serious third party offers to buy the disputed domain name, despite having offered it for sale for at least several years, and its lack of use by the Respondent, are further evidence that the disputed domain name has degenerated into bad faith registration and use;
• the broker correspondence indicates that the Respondent is probably only willing to sell the disputed domain name for a very high price, which is another indicator of bad faith.

Degenerated into a bad faith registration? That’s the first time I’ve heard that argument.

The case was dead on arrival because the domain was registered in 1998 and the Complainant has trademark rights that postdate that significantly.

Taylor said he had little difficulty finding this was a case of reverse domain name hijacking:

First, as set out in detail in section 4 above, the Complainant made an unsuccessful pre-filing attempt to buy the disputed domain name from the Respondent via the GoDaddy brokerage service.

Second, the Complaint itself acknowledged that the Respondent registered the disputed domain name in 1998 whereas the Complainant asserted trade mark rights that commenced only in 2014, thereby ignoring established Policy precedent that registration in bad faith could not arise in those circumstances.

Third, the Complaint raised implausible legal arguments focused more on the Complainant’s desire/alleged entitlement to obtain the disputed domain name than any bad faith on the part of the Respondent, e.g., claiming that the disputed domain name had “degenerated” into bad faith registration and use simply because it was blocking the Complainant from itself using the disputed domain name.

Fourth, in its Supplemental Filing, far from claiming any plausible legal basis for its Complaint, the Complainant acknowledged that it filed the Complaint because it saw no other way of engaging in in the potential purchase of the disputed domain name from its unknown owner. It was entirely improper for the Complainant to use the UDRP – which potentially involved the registrant of the disputed domain name having to suffer the cost and/or inconvenience of defending its domain name – simply as a consequence of not knowing the Respondent’s identity or as a tool for the Complainant to uncover the Respondent’s identity in order to facilitate purchase negotiations. Despite the Complainant’s contentions otherwise, none of the following remotely constitute a plausible legal basis for the Complaint or otherwise justify its filing in the circumstances of this case: that the Complainant considered the disputed domain name to be “relevant”, that the disputed domain name had been dormant for many years; and that the Respondent did not respond to the broker enquiries, however surprising the Complainant might have found that.

Finally, the Complainant objects to the Respondent’s hostility to the Complainant’s settlement communications. However, the Respondent was in no way obliged to discuss sale of the disputed domain name to the Complainant following the filing of the Complaint (or otherwise), and the Respondent’s tone is perhaps understandable in light of the Complainant’s misuse of the UDRP to further the Complainant’s attempted purchase of the disputed domain name.

Matchmark B.V., a trademark firm, represented Skytree B.V. in the dispute. Chestek Legal represented the domain owner.