Complainant mischaracterizes policy’s view on domain investing.
A World Intellectual Property Organization panel found (pdf) that Mecalac Construction Equipment UK, a company that sells construction equipment, tried to reverse hijack the domain name fermec.com.
Domain investor Global IP Holdings acquired the domain in an expired domain auction in 2019 for $240. A company affiliated with the complainant was the prior registrant, but let the domain expire.
Panelist Scott Blackmer’s reasoning for finding reverse domain name hijacking supports the domain investing business model. He noted (emphasis added):
The Complainant relied for the second element on a UDRP decision that it grossly mischaracterized as supporting the novel proposition that “domain name reselling, without actual use, does not establish a legitimate interest”. The Complainant’s case on the third element hinged on the Respondent’s offering the disputed domain name for sale and stated, incorrectly, that “Panels have consistently held that offering a domain name for sale at a price in excess of documented out-of-pocket costs constitutes evidence of bad faith under paragraph 4(b)(i) of the Policy”. That is not what the Policy says (and not what panels hold), and it is an overgeneralization that would largely invalidate the domain resale industry. The Policy infers bad faith where circumstances indicate that the respondent has acquired the disputed domain name primarily for the purpose of selling it to the owner of a trademark for a price in excess of out-of-pocket costs. This requires evidence demonstrating the probability that the respondent was aware of the trademark when the respondent acquired the mark and did so primarily with the intention of selling it to the trademark owner. “Generally speaking, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor).
IPSILON represented the complainant, and Ankur Raheja of Cylaw Solutions represented the domain owner.
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