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Spase.io tries reverse domain name hijacking

by — Policy & Law 0 Comments

A new company goes after domain registered in 2005.

Picture of masked man with the words reverse domain name hijacking

The owner of a business called Spase has been found to have tried reverse domain name hijacking the domain name Spase.com.

Spase is a service that converts photographs into 3D models. The business was just launched last year at Spase.io. The owner of Spase.com registered it in 2005.

In other words, this was a dead-on-arrival UDRP filing. The Complainant could not show that the domain registrant acquired the domain in 2005 to target a business that launched in 2019.

It’s another example of a case that could have been avoided if UDRP providers would ask a simple question on their intake form:

Do you claim trademark rights that predate the current registrant’s registration of the domain name?

If the answer is no, the UDRP provider can explain to the Complainant that they don’t understand the policy and are wasting their time and money.

In this case, the Complainant wasted money filing the UDRP and paying for a three-member panel as requested by the Respondent. The Respondent had to pay for the panel and hire an attorney. It was a waste of both parties’ time.

The Complainant, Sahil Gupta, was internally represented. Greenberg & Lieberman represented the domain owner Mrs. Jello, LLC. William Towns, Knud Wallberg, and Neil Brown decided the case for World Intellectual Property Organization.

 

Bytedance files cybersquatting dispute against TikToks.com

by — Policy & Law 7 Comments

Owners told a newspaper they turned down a $145,000 offer for the domain name.

Screenshot of TikToks.com

TikToks.com, soon to be owned by Bytedance.

In June, the Herald Sun published an article about two Melbourne teens who have had success with online businesses. The article stated:

And about six months ago, the pair purchased the domain name TikToks.com for $2000 after predicting TikTok would become the next big social media platform.

They’ve recently been offered $US145,000 ($A209,947) to buy it, but they plan to hold it and launch the world’s first TikTok growth service.

I mentioned on twitter that the two guys gave TikTok Exhibit A for a future UDRP.

Fast forward three months, and TikTok’s parent company Bytedance has filed a cybersquatting complaint under UDRP against the domain. It seems like a slam dunk; the business at TikToks.com is selling followers and likes for the service.

They should have taken the $145,000.

(Thanks Elliot)

Saudi Aramco tries to take dead man’s domain name

by — Policy & Law 0 Comments

Company tries to use UDRP to take domain registered in 1997 by now-deceased man.

Saudi Aramco logo

One of the world’s most valuable companies just plumbed new depths in cybersquatting disputes.

Saudi Aramco, the $133 billion Saudi Arabian oil company, filed trademarks for a new brand called Orizon last year. Naturally, the company would like the domain Orizon.com.

But there’s a problem.

Orizon.com was registered in 1997 by Orizon Multimedia Inc. The company used the domain for its business but then shut down. Apparently, the owner of the business passed away last year.

So Saudi Aramco decided to file a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) to try to get the domain.

Here’s the thing: in order to win a UDRP case, a trademark holder must show that the domain was registered in bad faith when it was initially registered.

Clearly, the registrant did not register the domain in bad faith since he used it for his legitimate business. Oh, and he registered it more than two decades before Saudi Aramco decided to adopt it as a brand, so it wasn’t registered to target Saudi Aramco.

World Intellectual Property Organization panelist Nick Gardner correctly ruled that this isn’t a case of cybersquatting. He considered if it was reverse domain name hijacking but, ultimately, gave Saudi Aramco a pass. One of his reasons: since the domain owner is dead, he wasn’t burdened by Saudi Aramco’s filing.

Fish & Richardson P.C. represented Saudi Aramco.

Denmark firm tries reverse domain name hijacking Mountaintop.com domain

by — Policy & Law 0 Comments

Panel determines the case was “dead on arrival”.

Picture of masked man with the words reverse domain name hijacking

Mountain Top ApS, which manufactures covers for pick up truck beds, has been found to have engaged in reverse domain name hijacking over the domain name Mountaintop.com. The company uses the domain Mountaintop.dk for its website.

The owner of the domain registered in 1995. The Complainant argued that there was a transfer in ownership in 2012-2013 and that this should count as the registration date. But the transfer was merely a change of registrant name involving the same owner. Even if it was a transfer, the new owner used Mountaintop in its brand, showing rights or legitimate interests in the domain. (Mountain Top claims common law trademark rights dating to 2002, hence its desire to show a transfer date after it claims rights).

The domain owner has used the domain for a personal blog and email.

While the Complainant could not find the owner’s full details in Whois at the time it filed its case, it was made aware of them during the verification phase and did not withdraw the case. A bit of additional research before filing the case would have shown the domain’s use over the years, too.

A three-person World Intellectual Property Organization panel ruled that this was a case of reverse domain name hijacking even though the domain owner didn’t ask for it.

…This Complaint was dead on arrival and likely would have been denied had there been no Response. The Complainant’s entire case on bad faith is that the Respondents registered the Disputed Domain Name intending to sell it to the Complainant. Not only is this allegation supported by no evidence at all, the charge is grounded on a theory of constructive notice that has long been held to be inadequate for Policy purposes (see WIPO Overview 3.0, section 3.2.2) and the obviously spurious statement that “mountaintop” is not a common term. The Complainant, which bears the burden of proof on each Policy element, did at best minimal due diligence once it learned the identity of the Respondents – enough to find that the Respondent Business used the term in its business name, something that normally constitutes bona fide use. “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH.” Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, quoting from Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.

The Complainant’s allegation that the Respondents acquired the Disputed Domain Name to sell it to the Complainant has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondents have never offered or invited offers to sell the Disputed Domain Name and did not respond to the Complainant’s offer to purchase the Disputed Domain Name for that reason.

The Complainant also failed to demonstrate that it had been targeted by the Respondents or provide any evidence to support a conclusion that an individual or organization in the United States was likely to be aware of the use of the Trade Mark (a common English word mark) by a Danish automotive parts supplier.

The Panel considers the Complainant likely launched the proceeding either in anticipation of a default or, more likely, to encourage the Respondents to engage in negotiations with the Complainant to sell the Disputed Domain Name. Either such motive belies the Complainant’s undertaking, required by paragraph 3(b)(xiii) of the Rules, “that this Complaint is not being presented for any improper purpose”…

It appears that Mountain Top’s interest in the domain might be because it’s opening a production plant in the U.S. it announced the plant yesterday.

Elmann IPR Law Firm represented the Complainant. John Berryhill represented the Respondent. The panelists were John Swinson, Andrew Lothian, and Richard Lyon.

This should have been reverse domain name hijacking

by — Policy & Law 0 Comments

This UDRP should have never been filed.

Tub of "I can't believe it's not butter" with RDNH replacing the word butter

OSRAM GmbH, a German lighting company, has lost a UDRP against a Vietnam-based cloud services consultancy. Even though the Respondent didn’t reply to the dispute, this seems like a clear cut case of reverse domain name hijacking.

The lighting company filed the dispute against OSAM.cloud. The domain name is one letter off from its trademark, and this could be a case of cybersquatting under very different circumstances.

OSAM.cloud forwards to OSAM.io, the website for a cloud consulting company in Vietnam. It clearly uses the domain name for a real business.

The lighting company offers some cloud services and connected services, hence its argument for cybersquatting. But its complaint is way off the mark.

OSRAM argued:

Respondent’s choice of the disputed domain name, which is identical to the well-known Complainant’s registered trademark ‘OSRAM’, clearly indicates bad faith intent to register and use of the disputed domain name. Apart from the above, the Respondent has not attempted to make any bona fide use of the disputed domain name. […] It is obvious that the Complainant’s famous trademark is being used in order to attract potential buyers to the website to which the disputed domain name resolves. Here, the Respondent practically using the Complainant’s trademark color and stylization knows about the worldwide well-known Complainant’s trademarks ‘OSRAM’.”

To suggest that the Respondent is using the domain to confuse OSRAM customers strains credulity.

In denying OSRAM’s case, panelist Scott Blackmer wrote:

As noted in the factual discussion above, the Respondent’s website reflects a registered and fully functioning consultancy business operating since 2017 with a website at “www.osam.io”. The Domain Name is a relevant addition to the Respondent’s domain name portfolio, as its gTLD “.cloud” is pertinent to the cloud services business in which the Respondent is engaged. The Respondent advertises consulting to assist clients in using AWS-hosted cloud services, and the Respondent is indeed listed as a partner by AWS since 2017. The Respondent appears in multiple media articles and directories, consistent with the story told on the Respondent’s website. On the face of it, there is nothing on the Respondent’s website that mentions the Complainant or competes with its business. There is simply an unrelated business with a name that differs from the Complainant’s mark by one letter. On this record, the Panel does not find persuasive evidence to support the Complainant’s inference that the Respondent chose the name of its business and the corresponding Domain Name in an attempt to misdirect Internet users for commercial gain.

OSRAM also argued that the logo on OSAM’s website was similar. The panelist (rightfully) noted that this is not the case.

Blackmer deserves kudos for doing his simple research of the Respondent in light of no response. I think he should have gone a step further and found reverse domain name hijacking.

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