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Wireless charging company tries reverse domain name hijacking

by — Policy & Law 0 Comments

Energysquare tries to upgrade its domain name by abusing the Uniform Domain Name Dispute Resolution Policy.

The words "Reverse domain name hijacking" and a computing image of a skull

A French company that licenses wireless charging technology has been found to have tried reverse domain name hijacking the domain Energysquare.com.

Energysquare uses the domain name Energysquare.co, so it’s obvious why it wanted to upgrade.

The problem for the company is that the owner of the .com registered it before Energysquare existed, making it impossible that the domain owner registered the domain in bad faith to later sell the domain to the company.

World Intellectual Property Organization Panelist John Swinson found in the domain owner’s favor and determined that Energysquare was guilty of reverse domain name hijacking.

Swinson determined that Energysquare alluded to certain provisions of UDRP that were not relevant to the current case. He wrote:

The Complainant’s only ground for bad faith was that the Respondent is a “domainer” who owns almost 1,000 domain names and that the disputed domain name is not being used but is listed for sale. The Complaint appears to rely on paragraphs 4(b)(i) and (ii) of the Policy but does not explicitly cite those provisions.

Under paragraph 4(b)(i) of the Policy, it would be evidence of registration and use in bad faith if there are circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a large profit. As the Complainant did not exist when the Respondent registered the disputed domain name, this could not have been the Respondent’s primary intention at the time the Respondent registered the disputed domain name…

and:

Finally, the Complainant indirectly implies that the Respondent has engaged in a pattern of conduct of registering domain names for the purpose of reselling, as the Respondent owns many domain names, which are for sale. However, simply owning a number of domain names is not of itself evidence of bad faith. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademarks, and an abusive conduct based on to the similarity of such domain names with the third party trademarks. Here, there is no such evidence, nor that the domain names were registered by the Respondent to prevent existing third party trademark owners from the registration of the corresponding domain names.

Walter Billet Avocats represented Energysquare. The domain owner represented itself.

Here’s the third RDNH of the day

by — Policy & Law 4 Comments

World Intellectual Property Organization published three reverse domain name hijacking decisions today.

Black background with white numbers 1 2 and 3 with red x through them

When it rains, it pours, and today that means we have three reverse domain name hijacking (RDNH) cases to report.

Earlier today, I wrote about reverse domain name hijacking findings for Koibox.com and Machani.com.

The third case is for WWTM.org.

Maharishi Foundation USA, Inc is the guilty party in this case. It has a U.S. trademark for TM, which is short for its Transcendental Meditation technique. It uses the domain TM.org.

Working With The Mind, a community interest company in the UK, uses WWTM.org for its site. The organization helps people with mindfulness, including mindfulness programs for prisons and people impacted by COVID-19.

One of the Complainant’s arguments was that WWTM.org is a typo of WWW.TM.org, but the panelist didn’t buy that.

World Intellectual Property Organization panelist John Swinson took issue with how Maharishi Foundation USA, Inc presented its case.

In finding RDNH, called attention to this statement by Maharishi Foundation:

“Clearly, Respondent selected and used the Disputed Domain Name solely to attract consumers to its website by trading on the fame of the TM trademark; such use can not confer any proprietary rights in Complainant’s trademark to the Respondent.

Furthermore, nothing on the Respondent’s website suggests any proper use of the TM acronym or a good faith basis for adopting the WWTM name. Respondent does not state anywhere on his sites what TM, alone, or in combination with WWTM means.”

Swinson disagreed:

Based on the evidence presented in the Complaint, it is certainly not clear to the Panel that the Respondent selected the disputed domain name solely to trade on the fame of the TM trademark.

Further, it is clear to the Panel that, even on a cursory review of the Respondent’s website, the disputed name is an acronym for “Working With The Mind”. The Respondent’s website uses the name “Working With The Mind” in many places, including in the title. Prior to filing the Complainant, the Complainant and the Respondent communicated by email. The Respondent in this correspondence stated to the Complainant’s attorney: “You and the Foundation you represent can read more about WWTM on our website at wwtm.org.” The Complainant had no reasonable basis to assert in the Complaint that nothing on the Respondent’s website suggests any proper use for adopting the WWTM name.

The Complainant was legally represented. The Complainant promotes techniques to improve calmness, clarity of mind and happiness. The Respondent is a small social enterprise with limited funds and is self-represented, and it is reasonable for the Panel to conclude that the Complainant was aware of this before filing the Complainant.

Shuttleworth & Ingersoll P.L.C. represented the Complainant. The Respondent represented himself.

Indian firm tries reverse domain hijacking a common surname

by — Policy & Law 3 Comments

Company didn’t withdraw complaint after it was apparent the domain was owned by someone with the surname of the domain.

The words "Reverse domain name hijacking" and a computing image of a skull

A World Intellectual Property Organization panelist has found Machani Infra Development Corporation Private Limited to have engaged in reverse domain name hijacking.

The company filed a UDRP complaint against Machani.com and failed to convince the panel of any of the three prongs required to win a cybersquatting dispute.

Most damning was that the domain name owner’s last name is Machani. While it’s plausible that the Complainant didn’t know this when it filed its dispute, it didn’t withdraw the case after finding out this information. Instead, it doubled down by trying to submit a supplemental filing that did not dispute the evidence about the family name of the Respondent but started with the statement that “The Respondent has not disputed or denied any of the submissions and contentions made in the complaint and is, therefore, deemed to have accepted the submissions and contentions made in the complaint”.

The panelist also found that the Complainant made inflated claims about trademark rights in the term Machani. In any event, the supporting evidence it submitted to purported common law rights post-dated the domain registration.

IndusLaw represented the Complainant, and Ankur Raheja of Cylaw Solutions represented the domain owner. This is the second reverse domain name hijacking finding Cylaw has won that was published today.

Spanish company attempts to reverse domain hijack Koibox.com

by — Policy & Law 0 Comments

Company filed UDRP even though domain owner registered domain well before it existed.

the words "reverse domain name hijacking" in pale yellow type on a black bacground, next to a graphic of a pirate face

A Spanish company that provides software to beauty salons attempted to reverse domain name hijacking Koibox.com, a World Intellectual Property Organization panelist has ruled.

Software Koibox S.L. filed the UDRP after first inquiring about buying the domain. According to the decision, it initially tried to buy the domain in 2015, shortly after it was founded. At the time, the registrant wanted $2,000, but the company only offered $500. It inquired again in 2019, and the domain registrant requested $50,000.

None of this matters because the owner registered the domain in 1999, some 14 years before the Complainant existed. Therefore, it’s impossible that it was registered in bad faith to target Software Koibox.

In finding reverse domain name hijacking, panelist Warwick Rothnie wrote:

Bearing in mind that the Respondent registered the disputed domain name in 1999 some fourteen years before the Complainant even existed or adopted its trademark, the Complainant should have known the Complaint must fail. Instead, the Complainant filed the Complaint, the substantive text of which consists of five paragraphs without satisfactorily addressing the fundamental requirement of registration in bad faith under the Policy.

Software Koibox appears to use the domains Koibox.net and Koibox.es.

Ankur Raheja of Cylaw Solutions represented the domain owner.

BNPL company Affirm attempts reverse domain hijacking

by — Policy & Law 1 Comment

Affirm filed a cybersquatting dispute against affirm.com.au after failing to negotiate a purchase.

Publicly traded company Affirm, Inc. (NASDAQ: AFRM) tried to reverse domain name hijacking affirm.com.au, a World Intellectual Property Organization panel has ruled.

Affirm, founded by PayPal co-founder Max Levchin, is a so-called Buy Now Pay Later company. It has a market cap of $18 billion and uses the domain name affirm.com.

The company tried to buy affirm.com.au for as much as $20,000 before filing the cybersquatting dispute.

The .au Dispute Resolution Policy requires a domain to be registered or used in bad faith to run afoul of the policy. Internet Products Sales & Services Pty Ltd registered the domain name in 2006, six years before Affirm was incorporated. This means the domain wasn’t registered in bad faith. The panel also found that the domain wasn’t used in bad faith.

In finding reverse domain name hijacking, the three-person panel wrote:

The Complainant, a publicly listed United States corporation advised by reputed international legal advisors, should have known better than to bring the Complaint in the circumstances. It appears to the Panel that these proceedings were only brought when the Complainant’s management decided a couple of years after obtaining Australian trade mark registrations that it required the disputed domain name for its business launch in Australia and as a result the Complainant set out to harass the Respondent and to procure the disputed domain name, by fair means or foul. In doing so, in circumstances that the Complaint could never succeed, the Complainant has abused the Policy and wasted its own and the Respondent’s resources. This conduct clearly amounts to reverse domain name hijacking and the Panel has no hesitation in finding as such.

DLA Piper represented Affirm, Inc.

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