Panelist found no evidence of targeting.
A German company that provides product and service comparison services has been found to have tried reverse domain name hijacking.
Check24 GmbH filed the dispute (pdf) against the domain name check24.co.uk.
Under Nominet’s Domain Resolution Service (DRS), a Complainant must show that it has rights in a mark that’s similar or matches the domain, and that the Respondent’s registration of the domain is abusive. This latter requirement is different from UDRP; under DRS, a domain originally registered in good faith can subsequently become an abusive registration.
However, DRS panelist David Engel ruled that this was not a case of abuse registration.
Check24 needed to show that the Complainant was targeting it with the registration.
Engel noted that the registrant, a domain investor, is in New Zealand, and that Check24 failed to show he would have been aware of its trademarks, which are only in Europe. The company had an EU trademark for the term when the Respondent acquired the domain in 2017. Engel wrote:
The Complainant’s attempt to fix the Respondent with some kind of constructive notice of its existence because he could have conducted a trade mark search against the CHECK24 name, is a stretch at best, and, in any event, does not assist it. The Policy contains no such requirement and DRS decisions recognise no such equitable doctrine.
Further:
If a respondent is to be found to have registered a domain name primarily for the purpose of selling it to the complainant, it is axiomatic that the respondent must have been aware of the complainant’s existence. Contrary to the Complainant’s contention, such awareness is indeed subjective. To suggest otherwise flies in the face of the clear wording of the Policy.
The panelist also took issue with Check24’s claim that “the only purpose of the registration is to take unfair advantage of the Complainant’s reputation and to create leverage for a financial gain”.
Engel said it’s difficult to see how this occurred when the registrant did not contact the Complainant to try to sell the domain to it. (The domain is merely listed for sale on Saw.com.) He also noted that DRS guidelines state that “Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities.”
The Respondent said he has acquired a large portfolio of domains that begin with ‘check’ or end in ’24’, and that he was not aware of the Complainant when he acquired the domain.
Ultimately, Engel ruled that the Complainant failed to prove on the balance of probabilities that the Respondent was aware of its existence at the time of registration in 2017.
Engel ruled this was an abuse filing. He wrote:
…In particular, the Complainant not only failed in its Complaint to take account of the legitimacy of domain name dealing, which might perhaps be ascribed to
ignorance or incompetence, but when its failure in this regard was identified in the Response, it nonetheless persisted in this submission in its Reply, asserting that “the continued offering of the disputed domain for sale, despite the Complainant’s Rights, fully justifies the Complaint”Similarly, its contention in the Reply that the Respondent’s registration of many domain names containing CHECK or 24 fell within paragraph 5.1.3 of the Policy, despite the fact that none of those domain names appear to “correspond to well known names or trade marks” (and the Complainant fails to identify any which do), is at best disingenuous and at worst an attempt to mislead the Expert.
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