What’s Italian for domain hijacking?

Colussi S.p.A. of Milan, Italy has been found to have engaged in reverse domain name hijacking (RDNH) over the domain name Colussi.com.

The domain name is owned by Andrea Colussi, a cousin of the current Chairman and a shareholder of Colussi S.p.A., and nephew of Angelo Colussi, the founder of Colussi S.p.A.

This was a dead-on-arrival case. How could you show that someone whose last name is Colussi doesn’t have a legitimate interest in the domain name Colussi.com?

The complaint suggests that Andrea Colussi should have transferred rights in the Colussi name along with a business sale that took place in 1999. The World Intellectual Property Organization panelist reviewed the documentation around that agreement but probably didn’t need to. It seems to be outside the scope of a UDRP.

The panelist listed five reasons for finding RDNH. The first one was reason enough:

…the Complainant was clearly aware of the Respondent’s identity and of his family name, Colussi, which is identical to the disputed domain name, and thus the Complainant had a clear knowledge of the Respondent’s rights and legitimate interests in the disputed domain name.

Domain owner used the domain for a business.

Apparel company Aether, LLC has been found to have engaged in reverse domain name hijacking in its attempt to get the domain name Aether.com.

The company that owns Aether.com used to offer a product at the domain name. The product is no longer offered and the domain forwards to a page with information about a software update for the product.

A three person panel found that the domain owner had rights or legitimate interests in the domain and did not register it in bad faith. This should have been obvious to the complainant.

The domain owner claimed that Aether LLC filed its complaint after failing to purchase the domain name. The panel found that the complaint was brought in bad faith.

Aether LLC was represented by the law firm Weintraub Tobin Chediak Coleman Grodin.

“Any reasonable investigation would have revealed that this was a Complaint that could not have succeeded,” panelist says.

A World Intellectual Property Organization panel has found Playtech Software Limited to have engaged in reverse domain name hijacking over the domain Playtechla.com. Playtech uses the domain name Playtech.com.

The company filed a cybersquatting complaint under UDRP against Play Technologies S.A.S, a Colombian development firm. Playtech said it became aware of the respondent and its domain name at a trade show in 2017.

It’s quite clear that the domain name owner is operating a business at the domain name Playtechla.com, and this contributed to panelist Nicholas Smith determining that the case was brought in bad faith:

The Panel finds that the decision to file a Complaint when the Complainant was aware of the Respondent’s prima facie legitimate use of the Domain Name and in circumstances where its arguments as to the Respondent’s lack of bona fide use had no realistic prospect of success constitutes reverse domain name hijacking. Any reasonable investigation would have revealed that this was a Complaint that could not have succeeded.

Smith also noted that “This case illustrates the widely recognized principle that the Policy is designed to deal with clear cases of cybersquatting.” That’s something some panelists lose sight of.

The complainant was represented by Linklaters in London.

Complainants first tried to buy domain before filing UDRP.

FPT Industrie S.p.a. and REM Industrie S.r.l. have been found to have engaged in reverse domain name hijacking in a domain dispute they brought against domain investor HugeDomains.

The companies, which use the domain fptfastmill.com, filed a UDRP with World Intellectual Property Organization for the domain name FastMill.com.

HugeDomains pointed out that the complainant first tried to buy the domain and subsequently filed a trademark application for Fast Mill before filing the complaint. The complainants do have a trademark for FPT Fast Mill.

The decision has good language for domain name investors, pointing out that the registration of generic and dictionary term domain names for resale can establish rights or legitimate interests in the domain names.

In finding reverse domain name hijacking, the panel wrote:

In this case, the Complainants filed the Complaint only after its attempt to purchase the Disputed Domain Name from the Respondent was unsuccessful (i.e. the Respondent did not respond to any of the Complainants’ offers). The general weak nature of the Complaint, the lack of evidence and the Complainants failure to fully address the 3 requirements under paragraph 4(a) of the Policy demonstrates that the Complainants were likely aware that they did not have a legitimate case against the Respondent, and filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith. This is supported by the fact that the Complainants only sought to apply for the registration of the FAST MILL mark in Italy after its offer to purchase the Disputed Domain Name from the Respondent remained unanswered. It is also clear that this was done in a misguided attempt to bolster or lend legitimacy to the Complaint. The Complainants also misrepresented the facts of the case in the Complaint. For example, the Complainants state that the Disputed Domain Name “has been offered for selling to the complainant [sic]”. However, no such offer was directly made to the Complainants – it was the Complainants who approached the Respondent and offered to purchase the Disputed Domain Name for USD 1,500.