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Spanish company tried reverse domain name hijacking

by — Policy & Law 5 Comments

Attorney tried to intimidate domain name owner to settle dispute.

Reverse domain name hijacking graphic

Decoweb Brands, S.A. of Spain has been found to have engaged in reverse domain name hijacking over the domain name MaisonDecor.com.

It certainly seems like Decoweb’s counsel tried to bully the domain owner into handing the domain over. According to the World Intellectual Property Organization decision:

Prior to the filing of the Complaint, the Complainant’s legal representative contacted the Respondent, in English, seeking information about a possible sale of the disputed domain name. On July 22, 2019, the Respondent offered a price of USD 8,500 and, later the same day, USD 7,000. The Complainant’s legal representative made a counter-offer of USD 500 that the Respondent rejected. On October 17, 2019, after the filing of the Complaint, the Complainant’s legal representative sent an email to the Respondent making a further counter-offer of USD 300 for the transfer of the disputed domain name and settlement of this dispute. In that email, the Complainant’s legal representative alleged that if this counter-offer was rejected and the Panel ordered transfer of the disputed domain name, the Complainant could probably also initiate proceedings for indemnity and procedural costs against the Respondent.

That’s not good.

Decoweb didn’t provide proof of use of the Maison Decor trademark, despite it having acquired a Spanish trademark that was registered in 1994 by another party. Without proof, it was hard to convince the panelist that the Chinese registrant targeted it with the registration.

That said, it appears that the domain owner either mislead panelist Matthew Kennedy or Kennedy read too much into the response. Kennedy believed the domain owner was the original registrant in 1998. Historical Whois records show that the domain expired in 2010 and was registered by a party in China.

It doesn’t seem like this would have changed the overall decision, though. The respondent showed that Decoweb was founded in 2015. Without showing that it acquired actively used trademarks prior to 2010, it wouldn’t have mattered. Even then, with two generic words, it would have been an uphill battle to win this case.

Walmart’s Vudu is a reverse domain name hijacker

by — Policy & Law 5 Comments

Vudo.com was registered well before the streaming video company existed.

A screenshot of Vudu.com showing Good Boys video

Vudu filed a cybersquatting complaint against Vudo.com. It was found guilty of reverse domain name hijacking.

Vudu, a streaming video subsidiary of retail giant Walmart, has been found to have attempted reverse domain name hijacking over the domain name Vudo.com.

The company filed a cybersquatting complaint against the domain name owner, even thought the owner registered the domain name well before Vudu was founded. A key requirement of the Uniform Domain Name Dispute Resolution Policy (UDRP) is that the Complainant’s trademark rights must predate the domain owner’s registration. After all, if he registered the domain before the Complainant had trademark rights, then it’s hard to prove that he registered the domain to target a non-existent brand.

In finding reverse domain name hijacking, a World Intellectual Property Organization panel wrote:

The Complainant entirely sidesteps the glaring deficiency in its case on the second and third elements of the Complaint. The Domain Name is a homophone of a dictionary word, and it was registered long before the Complainant or its trademark existed. The Complaint repeatedly emphasizes the registration of the Complainant’s domain name in 1995 to suggest that the Complainant has senior rights, without disclosing that this registration was by an unrelated party. The Complainant evidently acquired that domain name in 2007 and began using VUDU as a mark in September 2007, as it claimed in its applications to the United States Patent and Trademark Office. The Complaint insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name. Even without glancing at the WIPO Overview 3.0, counsel for the Complainant should have recognized from the plain language of the Policy that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.

Vudu was represented by Drinker, Biddle & Reath, LLP. The domain owner was self-represented.

How this RDNH could have been prevented

by — Policy & Law 5 Comments

A simple question could have prevented this cybersquatting complaint.

Reverse domain name hijacking graphic

A National Arbitration Forum Panelist has found that a complaint brought by Gary Chupik, a Washington man, over the domain name EliteMindset.com was attempted reverse domain name hijacking.

The facts follow a common pattern: Complainant wants a domain and tries to buy it. Failing to get it for the price he wants, he registers a trademark for the name and then files a UDRP.

It’s called “Plan B” reverse domain name hijacking.

In this case, the Complainant states that he sought legal advice but he appears to have filed the case on his own. It was a weakly argued case that was essentially dead on arrival.

This case is an example of one that could be avoided if ICANN or UDRP providers implemented a simple change to the filing process. They could ask:

Do you claim trademark rights to this domain name that pre-date the domain owner’s registration of the domain name?

It could then explain the requirement to prove a UDRP.

This would have saved Chupik from wasting his time and money filing the case. It would have saved the Respondent from having to respond to the case. Everyone would have been better off. Except, I suppose, the forum.

When is RDNH not RDNH?

by — Policy & Law 1 Comment

Answer: when the UDRP panelist fails to address it.

Tub of "I can't believe it's not butter" with RDNH replacing the word butterSome cybersquatting cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) are bad. Some are so egregious that you wonder how much research the Complainant did before fiing the case.

Such is the case with a recent dispute over Duggan.com.

The Complainant, who was represented by counsel, argued that Thomas Duggan was cybersquatting with the domain name he registered in 1995 because:

  • Complainant has also been forced to register the duggan.cc domain name because the .com was taken.
  • Respondent’s only use of the Domain Name was to maintain an email address.
  • Respondent failed to enter into negotiations to sell the domain to Complainant.

I’m not kidding. These are all stated in the panelist’s UDRP decision.

Obviously, the panelist did not find that the domain was registered and used in bad faith.

What’s unfortunate is that panelist Nicolas Smith did not consider reverse domain name hijacking (RDNH). Thomas Duggan had to take the time to defend his domain name against a case that had no chance of succeeding under UDRP.

I doubt that the Respondent asked for RDNH, but a panelist should always consider it when the Respondent prevails in a case.

 

Lawyer labels domain investing “Anticipatory Cybersquatting”

by — Policy & Law 33 Comments

Article published by ABA could lead trademark holders astray.

Picture of a question mark on a chalkboard with the words

I was doing some research this weekend when I came across an article published by American Bar Association in June. The article by Tamara Kurtzman, a California attorney, rails against the practice of buying domain names for future sale to companies that may want to use them. Kurtzman calls this “anticipatory cybersquatting.”

Kurtzman blames people registering domains that might someday be similar to trademarks for causing a “frustration of corporate opportunity.”

She notes that not all of this activity is bad, though.

It is important to note, however, that not all instances of anticipatory cybersquatting quash legitimate business opportunity. Specifically, as the harms associated with this practice derive primarily from an interference with a trademark holder’s trademark rights, the registration of domain names that cannot be trademarks in the first place (such as generic terms) do not compromise corporate opportunity.

Aren’t most trademarks made up of “generic” terms?

Kurtzman explains that the Anticybersquatting Consumer Protection Act (ACPA) doesn’t effectively counter “ancticipatory cybersquatting” because the trademark has to be distinctive or famous at the time the domain is registered.

She contrasts this with UDRP, in which she makes a startling statement:

Although the UDRP does not directly prohibit anticipatory cybersquatting, it is currently the preferable means of extricating a domain name from anticipatory cybersquatters in many circumstances. Unlike the ACPA, the UDRP does not require that the domain name at issue be distinctive or famous at the time of registration. As such, even holders of after-acquired trademark rights may seek relief under the UDRP.

The UDRP specifically states that the domain must have been “registered and used in bad faith”. So if it was registered before the Complainant had a trademark, then it’s not a case subject to transfer under UDRP because it couldn’t have been registered in bad faith to target the new trademark holder.

Kurtzman clarifies:

In light of these largely ineffective efforts, UDRP panels have been increasingly broadening their interpretations of the bad-faith UDRP element in order to find against anticipatory cybersquatters. Specifically, administrative panels increasingly are willing to rule that, even though a trademark holder may have acquired trademark rights after the registration of a domain name, action by the domain registrant that seeks to take advantage of a complainant’s goodwill in its mark is sufficient to constitute bad faith under the UDRP. Similarly, UDRP panels increasingly have been willing to find that website inactivity (a respondent’s passive holding of the domain) is evidence of bad-faith use and registration in that it suggests registration for the purpose of selling the domain for profit.

I’m not sure what timeframe Kurtzman is considering, but I don’t find panels to be “increasingly broadening their interpretations.” It is true that some rogue panelists have tried to bend the plain language of UDRP to find in favor of Complainants, but this practice seems to have significantly diminished, especially since the release of the WIPO 3.0 update in 2017.

Also, filing a UDRP when trademark rights postdate the registration is grounds for being found guilty of reverse domain name hijacking. As stated in WIPO’s overview:

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,…

I could not find any UDRP cases in which the author has been listed as representative by searching UDRPSearch and UDRP.tools.