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Loco UDRP ends in reverse domain name hijacking

by — Policy & Law 1 Comment

Tech company tries to hijack domain name registered in 1999.

Reverse domain name hijacking graphic

 

A Brazilian technology company has been found guilty of reverse domain name hijacking in its effort to get the domain name InLoco.com. The Complainant, In Loco Tecnologia da Informação S.A., uses InLoco.com.br for its website.

The phrase “in loco” is a common Latin phrase meaning “in the place” or “in the right or proper spot”. (Loco also means “crazy” in Spanish, and loco is an apt description of this case.)

The owner of the domain name registered it in 1999, well before the Complainant was established in 2014. In Loco Tecnologia attempted to acquire the domain name from the registrant before filing the UDRP complaint.

After filing the complaint, In Loco Tenologia tried to withdraw it. But the domain name owner said he’d only consent to this if it was with prejudice, meaning that it couldn’t be filed again at a later date. He also wanted the panel to rule on reverse domain name hijacking.

The three-person World Intellectual Property Organization panel agreed with the domain name owner:

To allow a complainant to simply withdraw a complaint without prejudice after a response has been filed would allow for the possibility of a complainant refiling a complaint against the same respondent at a later point. Such “eleventh hour withdrawals” of complaints without prejudice invites the filing of potentially abusive complaints for strategic reasons.

It found that the Complainant had no chance of winning the case and attempted reverse domain name hijacking.

Let’s add these 2 questions to UDRP complaints

by — Policy & Law 4 Comments

It would avoid a lot of reverse domain name hijacking findings.

Reverse domain name hijacking graphic

There are two common things I see in UDRP filings that trip up Complainants and often end in findings of reverse domain name hijacking (RDNH).

  1. The Complainant files a UDRP against a domain name that was registered by the Respondent before the Complainant existed or had trademark rights.
  2. The Complainant refers to a case involving Octogen Pharmacal Company, Inc, or other cases that argue “retroactive bad faith.”

The latest example is Kevac S.r.l’s filing for the domain name Kevac.com. At best, it had weak arguments for a common law trademark that pre-dated the domain registration. It also referred to the retroactive bad faith cases. While some panelists agreed with retroactive bad faith a long, long time ago, the argument has been widely panned since then.

Kevac lost the UDRP and was found to have engaged in reverse domain name hijacking.

Reverse domain name hijacking is bad for the Complainant. It wastes time, money, and legal resources and the company is labeled a reverse domain name hijacker. It’s also bad for the domain name owner, who must pay to defend the case.

Many RDNH cases could be avoided if the UDRP form added two questions to the submission.

  1. Does your trademark pre-date the Respondent’s registration of the domain name, or is there a good reason the domain name owner would have known of your brand prior to registering the domain name?
  2. Do you cite the Octogen case?

If the answer to the first question is no or the second one is yes, the UDRP provider could explain that the case is probably weak and might result in a reverse domain name hijacking finding.

This would have caused Kevac to think twice before filing its dispute, even if it had already been warned by the domain owner’s attorney.

In the instant case, Kevac was represented by LS LexJus Sinacta and the domain owner was represented by Muscovitch Law P.C.

 

Taco spat ends in reverse domain name hijacking

by — Policy & Law 0 Comments

Texas Mexican restaurant chain tries to reverse domain name hijack from an Alabama restaurant chain.

A picture of a plate of tacos with the words "Taco Fight!"

A Texas chain of taco restaurants has lost a domain name fight with an Alabama Mexican restaurant chain and was found to have engaged in reverse domain name hijacking.

Roy Upshaw d.b.a. Taco Casa and R&S Upshaw Franchising, LLC, filed a cybersquatting complaint against the domain name TacoCasa.com.

But it’s clear that the owner of TacoCasa.com registered the domain names for his own business. A business that has been operating since the 1970s, no less.

The domain registrant operates a chain of seven fast food Mexican restaurants in Alabama called Taco Casa.

As World Intellectual Property Panelist W. Scott Blackmer pointed out, it was plain as day that this wasn’t a case of cybersquatting:

Here, the Complainant offered few supporting facts, misstated a material fact (that the Respondent did not commence business until after the application for the first mark now held by the Complainant), and ignored evidence (available on the Respondent’s website and in conversation with the Respondent’s counsel) that the Respondent indeed possessed well-established rights and legitimate interests in the Domain Name long before the dispute arose.

The Complainant was represented by Norredlaw PLLC and the Respondent was represented by Bradley Arant Boult Cummings LLP.

 

Lotto Sport Italia tried reverse domain name hijacking, court rules

by — Policy & Law 3 Comments

Company tried to take two ‘lotto’ domain names away from Canadian man.

Logo for Lotto Sport Italia

Italian sportswear maker tried to get ‘lotto’ domain names from online gaming professional.

A Canadian man who registered LottoStore.com and LottoWorks.com has prevailed in a legal dispute with Lotto Sport Italia, with the court granting his motion for summary judgment (pdf).

The judge ruled that David Dent can keep the two domain names, and the judge entered judgment in favor of Dent on his reverse domain name hijacking claim.

Lotto Sport Italia S.p.A. filed a UDRP with World Intellectual Property Organization in 2016, shortly after Dent acquired the two domain names from third parties for over $11,000. Dent said he registered the domain names for online gaming, which is his background. Lotto Sport, on the other hand, is a sportswear manufacturer with no business relating to gaming.

But his UDRP defense seemed to be poorly argued and he lost. He subsequently filed a lawsuit in U.S. court.

The court ruled that Dent’s registration of the domains did not violate the Anticybersquatting Consumer Protection Act (ACPA).

Among other things, the court considered the original registration dates of the domains as the pertinent dates rather than the Dent’s acquisition of the domains in 2016. UDRP panelists consider the date a registrant acquires a domain as the date of registration; under ACPA, courts tend to look at the original registration date.

Dent will now file for attorneys’ fees and liability for reverse domain name hijacking.

He was represented by Jeff Johnson of Schmeiser Olsen & Watts with the help of John Berryhill. Berryhill suffered a heart attack during the case, and Berryhill told Domain Name Wire that Jeff “took the ball and ran it 80 yards to the touchdown.”

Marc Randazza represented Lotto Sport.

Datacom Group tries reverse domain name hijacking

by — Policy & Law 0 Comments

Large IT company resorts to reverse domain name hijacking.

Reverse domain name hijacking graphic

A large IT company has been found to have tried reverse domain name hijacking the domain names datacom.net.au and datacomaccounting.net.au.

Datacom Group Limited filed a cybersquatting complaint with World Intellectual Property Organization against the two domain names.

The case appears to be particularly egregious. The owner of the two domain names showed that he’s been using the Datacom name since at least 1988. He registered datacom.net.au domain in 1997.

The decision also shows that Datacom Group first tried to negotiate to acquire the domain name. In those negotiations, it wrote “[r]est assured our client has taken into account your client’s use of Datacom over time.”

When those negotiations apparently stalled, Datacom Group filed a cybersquatting complaint under the AU Dispute Resolution Policy (auDRP). In the dispute, it argued that the domain owner did not have a legitimate interest in the domains, contradicting its earlier correspondence with the registrant.

In his decision, panelist Alistair Payne wrote:

It appears from the apparently “open” correspondence submitted in evidence, that the parties have been in negotiation in relation to the Complainant’s request to acquire the disputed domain names. It was only after these negotiations did not move forward that the Complainant filed this Complaint and alleged bad faith by the Respondent and this is in spite of the acknowledgement in the Complainant’s correspondence, as noted above, that it recognized the Respondent’s prior use of the “Datacom” name.

While there is nothing wrong in principal with such discussions, if it appears that the Policy is subsequently being used by a complainant, following unsuccessful negotiations, in a final “last ditch” bid to secure domain names in circumstances that the complainant should have known that it could not succeed from the outset, then this amounts to reverse domain name hijacking. This appears to the Panel to be the scenario here.

The Complainant is legally represented by a large and well-known international legal firm. It is reasonable to assume that the Complainant was therefore advised that as the Respondent had been using the “Datacom” name at least since the incorporation of Datacom Communications Pty Ltd in 1994 and that also in circumstances that it had registered the first of the disputed domain names in 1997 and the second some ten years ago, both in relation to what appear to be a bona fide websites and long standing businesses in Victoria, it would not be possible to demonstrate that the Respondent had no rights or legitimate interests in the disputed domain names, as required under the second element of the Policy. The Panel’s view in this regard is only reinforced by the Complainant’s counsel’s confirmation in its correspondence on September 10, 2019, to the Respondent’s counsel in advance of negotiations, that “[r]est assured our client has taken into account your client’s use of Datacom over time”.

As a result, the Panel finds that this Complaint amounts to a case of attempted reverse domain name hijacking by the Complainant.

The Complainant is a large business with over $1 billion annual revenue. It was represented by Norton Rose Fulbright LLP.

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