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WIPO panel says Celgene tried to mislead it in cybersquatting claim

by — Policy & Law 0 Comments

Panel says Celgene left important communications out of filing.

Picture of CelGene.com URL and website.

CellGene.com is one letter off from CelGene.com, but that doesn’t make it cybersquatting.

A three-person World Intellectual Property Organization panel has found Celgene Corporation (NASDAQ: CELG) engaged in reverse domain name hijacking over the domain name CellGene.com.

Through an intermediary, Celgene tried to buy the domain name in 2018, 15 years after the domain was registered. The domain owner responded with an asking price of $7,500.

The panel determined that Celgene did not prove that the domain owner lacked rights or legitimate interests in the domain name, nor was it registered in bad faith.

It found reverse domain name hijacking because it believes that Celgine tried to mislead it:

…In the Panel’s view, however, there is a more significant issue in the present case, which is that the Complainant has sought to mislead the Panel in accordance with item (iv) in the fourth paragraph of 4.16.

The Complainant claims that it offered the Respondent USD 2,000 for the disputed domain name when it became aware that the Respondent was listing it for sale in September 2018, that the Respondent counteroffered USD 7,500, which was “much more than what the domain should be sold for” and that it was highly likely that the Respondent significantly increased the price when it discovered that the Complainant was interested in the disputed domain name. As mentioned above, the Complainant invoked this counteroffer by the Respondent as evidence that the Respondent registered the disputed domain name in bad faith for the purpose of sale to the Complainant under paragraph 4(b)(i) of the Policy.

In those circumstances, it was incumbent on the Complainant to produce all relevant communications relating to the counteroffer; but it did not do so. The emails included in the factual summary in section 4 above only came to the attention of the Panel at the behest of the Respondent.

Even these emails do not appear to tell the full story, as they include no reference to the initial USD 2,000 offer mentioned by the Complainant. The Panel therefore deduces that this initial offer was made through the Respondent’s website and that, perhaps having received no or an unsatisfactory response, the decision was taken to follow up with the enquiry email of September 11, 2011. Crucially, this email was sent in the name of CSC. It made no mention of the Complainant and indeed gave no indication that CSC was acting for a client rather than on its own behalf (“We are interested in purchasing…”). Thereafter, the Respondent’s broker responded with the counteroffer of USD 7,500.

Accordingly, the communications appear to contradict the Complainant’s version of events and to confirm the Respondent’s assertion that the Complainant never revealed itself in the course of the purchase enquiries. In these circumstances, it is difficult to see how the Complainant can persuasively claim not only that the counteroffer indicated that the Respondent registered the disputed domain name for the purpose of sale to the Complainant but that the Respondent specifically increased its asking price to USD 7,500 when it allegedly discovered that the Complainant was interested in the disputed domain name.

Celgene is a biopharma company that is being acquired by Bristol-Meyers Squibb.

Cozen O’Connor represented Celgene. ESQwire.com represented the domain name owner.

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Bad Karma: Reverse domain name hijacking in Karma.com case

by — Policy & Law 9 Comments

An ironic finding in Karma.com UDRP.

Graphical element of the word Karma

Karma is….a company being found guilty of reverse domain name hijacking for the domain Karma.com while being represented by a lawyer who is also a UDRP panelist.

Karma International, LLC filed a UDRP against Karma.com and struck out on all three counts. The panel found that it didn’t show that the domain was confusingly similar to a mark in which it has rights, nor that the domain owner lacked a legitimate interest in the domain, nor that he registered it in bad faith.

That’s a rare trifecta.

The case is rather stunning. The Complainant tried to buy the domain name in 2009 and failed. Ten years later it followed up with a UDRP.

The domain owner registered the domain way back in 1994.

In other words, this was a dead-on-arrival case.

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

…The Panel is in agreement with Respondent’s submissions and finds, on any construction of the facts, that Complainant knew or should have known that it was unable to prove its Complaint. The explicit claims to bad faith registration and use made in the Complaint are largely specious and the accusations levelled at Respondent are groundless and malicious.

This is not the picture of an assiduous infringer slowly engineering the downfall of the rightful trademark owner. Indeed, on one construction of the evidence, it could be said that the Complaint was the design of a party disappointed by its failure, ten years ago, to secure the purchase of the domain name, who has turned the Policy against Respondent, indifferent to the integrity of that party.

Karma International was represented by Kristin Kosinski of Cislo & Thomas LLP. According to her bio, she is a panelist for National Arbitration Forum. I cannot find any cases she has heard as a panelist, and perhaps it’s best that she not decide cases given filing an RDNH case.

The domain name owner was represented by David Weslow of Wiley Rein LLP.

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Dialoga Servicios Interactivos, S.A. tries reverse domain name hijacking

by — Policy & Law 2 Comments

Company mistakenly included internal communications about bad faith in its submission.

Reverse domain name hijacking graphic

Dialoga Servicios Interactivos, S.A. of Spain has been found to have engaged in reverse domain name hijacking over the domain name Dialoga.com.

The company filed a UDRP against the domain name in 2017 and lost. That domain registrant let the domain expire and a domain investor bought it. Dialoga tried to buy the domain from the domain investor and ultimately filed another UDRP.

Two things were problematic for the Complainant. First, dialoga is a dictionary word in at least three major languages.

Second, the Complainant appears to have accidentally included internal communications about its intent in inquiring about buying the domain name. The communications suggest that it had an ulterior motive in its purchase inquiry:

In an internal communication in Spanish whose contents appear to have been inadvertently reproduced by the Complainant in the evidence submitted with the Complaint, and which has been translated by the Respondent, the Complainant proposes to call the Respondent and indicate that it is only interested in a purchase of the disputed domain name and would offer EUR 1,500. The Complainant notes that “the idea is to get them to imply that they will then do something else with it… something we can hold on to in order to prove bad faith on his part…”

Whoops.

LetsLaw represented the Complainant. Muscovitch Law P.C. represented the Respondent.

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Speaker hit for reverse domain name hijacking

by — Policy & Law 7 Comments

A keynote speaker and business coach filed a UDRP after failing to buy a domain name. It appears he got bad advice.

Reverse domain name hijacking graphic

Darryl Davis Seminars, Inc has been found to have engaged in reverse domain name hijacking over the domain name PowerAgent.con. A domain investor owns the domain name.

A World Intellectual Property panel determined that Darryl Davis Seminars, Inc did not show that the domain was registered in bad faith. The three-member panel decided that it was a “Plan B” reverse domain name hijacking case in which Davis filed a cybersquatting complaint under UDRP after failing to buy the domain name for a price he wanted to pay.

A couple of years ago he inquired about buying the domain name and received a quote of around $70,000. He responded to it by saying he had been “advised by his attorneys that he had a viable claim to recover the domain name via the UDRP” and offered $375.

The domain owner responded to that letter explaining why the case would fail under UDRP and would be considered reverse domain name hijacking. The Respondent heard nothing more until the UDRP filing, according to the decision.

After the Complainant filed the UDRP, the Respondent tried to contact the Complainant again to remind him “on the off chance that the Complainant had not disclosed to its counsel the existence of the Respondent’s previous warning letter and that as a result, the Complaint was brought in error as a misadventure. The Respondent called and sent an email to the Complainant’s counsel and offered the Complainant a final opportunity to withdraw the Complaint with prejudice but received no reply.”

The panel listed four reasons for finding reverse domai nname hijacking:

i) the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the term “power agent” encompassed in the disputed domain name cannot be exclusively referable to the Complainant, as claimed in the Complaint without any supporting evidence;

ii) the Complainant’s case is based on the argument that using a common/descriptive domain name in connection with a pay-per-click website and offering it for sale to the highest bidder, independently of any awareness of the Complainant, is of itself evidence of bad faith. The Panel finds that the Complainant should have contemplated that it could not succeed with such an argument;

iii) the Respondent’s response to the letter received by the Complainant before the filing of the Complaint highlighted the weakness of the Complainant’s case, but the Complainant omitted to address the issues raised by the Respondent and even to disclose the existence of such correspondence; and

iv) the circumstances of the case clearly show that this is a speculative “plan B case” launched by the Complainant after its failure to purchase the domain name from the Respondent.

Carter, DeLuca, Farrell & Schmidt, LLP represented the Complainant. Muscovitch Law represented the domain owner. The WIPO panel included Luca Barbero, Martin Schwimmer and Adam Taylor.

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CEAT tire company fabricated evidence, panel determines

by — Policy & Law 4 Comments

Panel says that tire company submitted “clearly fabricated” evidence.

The only way to get ads for tires on this page is to enter a tire search term.

Indian tire company CEAT (short for Cavi Elettrici e Affini Torino) has been found to have engaged in reverse domain name hijacking over the domain name CEATE.com.

The company owns the domain CEAT.com, which it won in a 2011 UDRP filing. There was one dissenting panelist in that case, Neil Anthony Brown. Brown was one of the panelists in the case for CEATE.com as well.

According to the World Intellectual Property Organization decision, CEAT manufactured evidence suggesting that the parked domain at CEATE.com showed ads for tires. It did this by entering “ceat tyre company” in the search box on the parked domain.

The three-person panel found that “Complainant’s screenshots showing use the disputed domain name in connection with the Complainant’s trademark submitted as Annex 2 to the Complaint have been clearly fabricated in an attempt to create evidence of the Respondent’s bad faith.”

It found that CEAT engaged in reverse domain name hijacking.

CEAT was represented by DePenning & DePenning, which has represented a client in a reverse domain name hijacking case before. The domain owner was represented by Zak Muscovitch.

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