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Reverse domain name hijacking over OpalShop.com domain name

by — Policy & Law 0 Comments

Panelist finds the complaint was brought to harass a known competitor.

Picture of masked man with the words reverse domain name hijacking

A World Intellectual Property Organization panelist has found Mighty Men Pty Ltd, trading as Opalshop, to have attempted reverse domain name hijacking for the domain OpalShop.com. The company uses the domain OpalShop.com.au.

OpalShop.com was technically registered to a dissolved company, but the owner of that company controls the domain.

Panelist John Swinson found that the Complainant didn’t show that the domain was confusingly similar to a trademark for which it had rights, and also that the domain was not registered and used in bad faith.

The Complainant failed to disclose prior communications with the Respondent, including an offer to buy the domain last year.

In finding reverse domain name hijacking, Swinson wrote:

It appears to the Panel that the Complainant has omitted material evidence from the Complaint. For example, according to the Response, the Complainant made an offer to buy the Disputed Domain Name from the Respondent in 2019. The Complaint is silent on this. The Complaint misrepresents the Chinese trade mark application as a word mark, and also did not make it clear to the Panel that the application had not proceeded to registration. The Complaint has also been drafted in a way that gives the impression that the Complainant does not know who is operating the website at the Disputed Domain Name, when (according to the Response) there have been various prior dealings between the Parties.

The Panel’s view is that the Complainant is seeking to use the UDRP to attempt to opportunistically obtain a domain name that has been legitimately used for over 20 years in connection with its ordinary meaning. The Complainant’s conduct verges on bad faith, appears to have been brought to harass a known competitor, and in the Panel’s view constitutes an abuse of the administrative proceeding.

Both parties represented themselves in the proceedings.

A disturbing UDRP ends in reverse domain name hijacking finding

by — Policy & Law 1 Comment

Panel says it believes the complaint contained false statements and evidence designed to mislead it.

Reverse domain name hijacking graphic

A World Intellectual Property Organization panelist has found reverse domain name hijacking in a cybersquatting dispute over the domain CheapStuff.com. It’s a disturbing case in which the Respondent’s counsel asserts—and the Complainant’s counsel ultimately does not refute—that the Complainant submitted falsified documents to the panel.

The Complainant is CheapStuff, Inc., but the communications in the case and the attorney who handled it for the Complainant are associated with AdMedia.

The crux of the Complainant’s case is that the domain was removed from its control even though it paid the renewal fee for the domain. It alleges that, when it reached out to the new domain owner (who bought it in an expired domain auction), the new owner asked for $150,000.

But a close examination of the documents and timeline call these assertions into question.

First, the Complainant produced an invoice and receipt for renewing the domain name dated 4/22/20. This is more than a month after the domain expired and the new owner acquired the domain at NameJet.

Second, the email in which the Complainant alleges that the Respondent asked for $150,000 for the domain has several oddities. The Respondent says he didn’t send the email. The Respondent’s attorney, John Berryhill, noted:

Secondly, on inspection of Complainant’s Annex 6, the Panel will note the notation “forwarded message” in what purports to be a reply, and a curious non-carriage-returned alignment of the “To:” field in Complainant’s exhibit. The auto-text “forwarded message” is not added to quoted text in an ordinary email reply, as any email user knows. The Respondent denies sending the email claimed in Complainant’s Annex 6, and it appears the Complainant forwarded its own sent message to itself and wrote in the “reply”.

The image below depicts the email exhibit attached to the Complainant’s submission as Annex 6. I have blurred out the email handles and highlighted the two items pointed out by Berryhill. I have also highlighted a statement by the sender that states it owned the domain since 1997, which Berryhill says is false.

cheapstuff.com dispute email

In finding reverse domain name hijacking, panelist John Swinson wrote:

…The Complaint was in the Panel’s view of the evidence submitted brought with disregard for the truth, and contains false statements and evidence designed to mislead the Panel.

For example, the Complainant says that the Complainant paid all renewal registration fees to the Registrar, including the recent renewal fee, but through some fault of the Registrar the Disputed Domain Name was not renewed. As part of the Complaint, the Complainant provides a purported invoice to show the payment of the renewal fees to the Registrar. The purported invoice is dated after the Respondent acquired the Disputed Domain Name at auction and after the Disputed Domain Name expired.

The Panel’s jurisdiction ends with this Decision, but the Respondent may have reason to report Complainant’s representative who certified the Complaint to the appropriate (e.g., bar association or otherwise) authorities.

The Complainant was represented by AdMedia’s in-house counsel, Robert Bass. I reached out to Bass to see if he wanted to comment on the allegations for this story. Bass responded:

The decision was simply wrong on these issues. Unfortunately, the way the process works, there is no ability to refute these erroneous conclusions. Thank you.

It’s worth noting that the Complainant made supplemental filings in the case, neither of which apparently address the Respondent’s allegations of doctored exhibits. I followed up with Bass by stating:

I’d like to give you the opportunity to refute them publicly because it wasn’t done in any of the additional submissions. So if you’d like to explain the Network Solutions renewal invoice from after the domain expired, or the issues with the email, pleas (sic) let me know.

Bass responded:

Mr. Allemann: I have nothing further to add and stand by what I wrote. Thank you.

Agencias Universales S.A. tries reverse domain name hijacking GEN.com

by — Policy & Law 1 Comment

Shipping company files an abusive UDRP to try to get .com matching its .cl domain.

Picture of masked man with the words reverse domain name hijacking

A Chilean shipping, transport and logistics company has been found to have tried reverse domain name hijacking the domain name GEN.com.

Agencias Universales S.A. filed a cybersquatting dispute with World Intellectual Property Organization to get the domain. The Complainant uses the domain name GEN.cl for its website; it is now known as “Grupo de Empresas Navieras,” meaning “group of shipping companies” in Spanish.

The domain owner registered the domain name for use in a now-defunct business called Global Education Network.

While the Complainant says it wasn’t aware of this when it filed the case, panelist Adam Taylor noted that the case still “failed by a large margin”.

He wrote:

The Complainant should have appreciated the level of evidence necessary to prove under the UDRP that the Respondent registered the disputed domain name in bad faith. The disputed domain name had a creation date of April 25, 1996, and even if acquired later, it is composed of three letters that could easily correspond to an acronym or to a dictionary word, and is currently passively held. The Complainant should have considered if there really existed any evidence to prove that the disputed domain name was registered with the Complainant’s trade mark in mind in order to take advantage of the Complainant’s trade mark with bad faith rather than for a legitimate purpose…

…As regards the Respondent’s plainly legitimate use of the disputed domain name, the Complainant says that it knew nothing of Jeff Williams or his alleged connection with the Company at the time of filing the Complaint. But even allowing for this, and even if it was reasonable for the Complainant not to have discovered the Company’s connection with the disputed domain name from the Wayback Machine, the Complainant still failed to put forward a stateable case for bad faith, let alone any relevant supporting evidence…

…Instead, the Complainant came up with a number of contrived arguments which fell far short of constituting bad faith, including an assertion that, of itself, use of the name “GEN” by the Complainant’s group with its alleged worldwide presence reinforced the Complainant’s right to own the disputed domain name with its “important” .com suffix…

The Complainant was represented by Sáenz de Santa María Abogados. The domain owner was represented by Pillsbury Winthrop Shaw Pittman LLP.

AIRY GreenTech tries reverse domain name hijacking

by — Policy & Law 0 Comments

offCompany tries (and fails) to upgrade its domain through a cybersquatting complaint.

Screenshot for AIRY.green

AIRY wanted to upgrade its domain to AIRY.com, but a WIPO panelist determined the case was brought in bad faith.

Talk about kicking someone when they’re down.

AIRY GreenTech GmbH has been found to have attempted reverse domain name hijacking for the domain name Airy.com. The domain name is owned by a travel business in Indonesia that has been struggling due to the pandemic. In fact, it has suspended its business due to the downturn.

This case has lots of twists and turns, but it ultimately shows how egregious the Complainant’s actions were in bringing the case, and then not withdrawing it when more facts became apparent.

AIRY GreenTech sells a plant system designed to clean your indoor air. It uses the domain airy.green for its website.

It tried to buy the domain name Airy.com back in 2015. Its highest offer for the domain was $40,000, but the owner wanted $80,000.

In 2017, the Respondent swooped in and bought the domain for $150,000. It operated the travel website AiryRooms.com and forwarded its new domain to AiryRooms.com.

A Uniregistry domain broker followed up with AIRY GreenTech after the Respondent bought the domain. This might have been confusing to AIRY GreenTech, but it still doesn’t excuse its case.

Even though Airy.com started forwarded to AiryRooms.com, AIRY GreenTech decided to file a UDRP in May against Airy.com. It argued:

The Complainant asserts that the redirection of the disputed domain name to another website demonstrates the illegitimacy of the Respondent’s interest therein and use in bad faith, adding that the Respondent is endeavoring to mislead Internet users into the belief that there is an association between the Complainant’s mark and the hotel booking services offered on the redirected site so that those searching for the Complainant will mistakenly reach the disputed domain name and be redirected to hotel booking related website unrelated to the Complainant whereby the Respondent will benefit commercially from traffic intended for the Complainant. The Complainant adds that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name thus further evidencing bad faith.

Sometimes I think lawyers should have a layperson read their arguments just to see if they make sense. That layperson would ask, “So the perpetrator is trying to trick your customers looking to improve their indoor air quality by selling travel in Indonesia?”

Yeah, it doesn’t make much sense.

If the Complainant didn’t do its homework before filing, it certainly should have known its case was dead after receiving verification information about who actually owned the domain. But it doubled down instead.

The panel wrote:

Once the original Complaint was filed, certain matters were disclosed upon Registrar verification which should also form part of the RDNH analysis as these should have influenced the Complainant’s decision to continue with the administrative proceeding. The Respondent’s personal name was revealed together with its email contact details which used an address “@airyrooms.com”. This is significant information as it appears to indicate a link between the Respondent and the website to which the disputed domain name was pointed. Despite the fact that the Complainant alleges that the said redirection of the disputed domain name was in fact indicative of bad faith, the Complainant appears to have made no attempt to investigate this new information. Had it done so, it is perfectly reasonable to conclude that it would have become aware of the Respondent’s employment status and link with “www.airyrooms.com”. This should also have alerted the Complainant to the fact that the Respondent was affiliated with the business to which the disputed domain name forwarded traffic. Both of these items were sufficient to demonstrate to the Complainant that the Respondent was legitimately connected to a business which was using the disputed domain name in connection with a bona fide offering of goods and services.

Despite this new material being placed before it, the Complainant merely indicated that it declined to direct the Complaint against the Respondent, noting that it was content to proceed against the privacy service which was the registrant originally noted on the public WhoIs record. Incongruously, the Complainant then went on to refer to the newly disclosed Respondent in the amended Complaint…

Panelist Andrew Lothian concluded that the case is an example of “Plan B” reverse domain name hijacking in which a company tries to buy a domain and resorts to UDRP when it is unsuccessful. He wrote:

Fundamentally, the Complainant’s failure to consider the dictionary word nature of the disputed domain name, the history of the disputed domain name and the background to its acquisition of rights in the AIRY trademark caused it to overlook multiple weaknesses in its case. Thereafter, the Complainant’s failure to make reasonable investigations as to the nature of the Respondent’s identity and business activities resulted in it failing to appreciate the nature of the Respondent’s rights and legitimate interests in the disputed domain name. These failures are all the more concerning given that the Complainant is represented by legal counsel.

The Panel concludes that this is a Complaint which was destined to fail and should never have been brought. In these circumstances, it is particularly regrettable that the Complainant’s actions have caused the Respondent to invest considerable time and resources in preparing and submitting a substantial Response at a time when, as it notes, it is also having to deal with the sudden detrimental effect of the current global pandemic upon its business.

It strikes me that now would be an excellent time for AIRY GreenTech to try to buy Airy.com. The domain owner has fallen on hard times due to the pandemic and has ceased its business. It would probably sell the domain for less than it bought it for.

Except…AIRY GreenTech took the low road instead of the high road. That’s going to make negotiating to purchase the domain much more difficult.

Office Freylinger S.A. of Luxembourg represented AIRY GreenTech. Fusion Law of Indonesia represented the domain owner.

Spa services company tries reverse domain name hijacking

by — Policy & Law 0 Comments

Domain was registered a decade before the spa company started its business.

Picture of masked man with the words reverse domain name hijacking

A spa franchising company has been found to have engaged in reverse domain name hijacking for the domain AccessSpa.com.

Philip Savino, who apparently has some connection to a spa franchiser called Access Spa, filed the dispute with World Intellectual Property Organization.

The owner of the domain name registered it in 2009. Access Spa was created last year, according to the dispute.

It’s impossible that the domain registrant could know that a company was going to use the brand starting ten years later. Therefore, the domain wasn’t registered in bad faith under the Uniform Domain Name Dispute Resolution Policy.

Panelist Warwick Rothnie wrote:

…the long period of several years between the registration of the disputed domain name and subsequent commencement of use of the trademark by the Complainant (and even longer period before registration of the Trademark) should have made it very clear that the Complaint could not succeed. On the record in this case, the Complaint should never have been filed.

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