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Tambour Ltd filed complaint that was “bound to fail”

by — Policy & Law 2 Comments

Paint company files abusive cybersquatting complaint.

Reverse domain name hijacking graphic

An Israeli paint company has been found to have engaged in reverse domain name hijacking over the domain name Tambour.com. Tambour is a dictionary word in French that means ‘drum’.

Tambour Ltd uses the domain name Tambour.co.il.

The paint company reached out to the owner of the domain name and the registrant indicated he’d sell the domain name for $20,000. The valuation was based on the dictionary meaning of the word.

According to the written decision by the three-member World Intellectual Property Organization panel, the Complainant also indicated in its inquiry to the registrant that it had previously owned the domain. The respondent challenges this assertion.

The panel wrote:

…Had the Complainant acted diligently, it would have taken into account the lack of supporting evidence and the obvious potential defense that “tambour” is a dictionary word when deciding whether to file a complaint under the Policy against the Respondent. The Complainant is represented by counsel who must be taken to have studied to some degree the basic elements of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and this is probably true since the Complaint includes references to this Overview. The Complainant’s counsel must have understood that the Complaint was bound to fail given the absence of any evidence to indicate bad faith on the part of the Respondent, but the Complainant was nevertheless filed after the unsuccessful attempt of the Complainant to acquire the disputed domain name.

Preminger & Co represented the Complainant. John Berryhill represented the domain owner.

Reverse domain name hijacking over ActiveOwnership.com

by — Policy & Law 0 Comments

Company filed UDRP after failing to purchase domain name.

Reverse domain name hijacking graphic

A Luxembourg company has been found to have engaged in reverse domain name hijacking over the domain name ActiveOwnership.com.

Active Ownership Capital S.à.rl filed the cybersquatting case with World Intellectual Property Organization. The company uses the Luxembourg country code domain name ActiveOwnership.lu, so it’s not surprising that it wants to own the .com equivalent.

The company reached out to the domain owner and made offers of up to €6,000. It then filed the UDRP after the purchase attempts failed.

Active Capital started doing business in 2015 and the domain name was registered in 2010. This means that the domain owner could not have registered the domain name in bad faith the target the non-existent Complainant.

The panel found that Active Ownership Capital S.à.rl filed the complaint in abuse of the UDRP because it did not address the obvious issue of the registration dates and because it mischaracterized actions of the domain owner.

123inkt.nl owner tries to reverse hijack 123ink.com

by — Policy & Law 1 Comment

Company admonished by WIPO panel for cybersquatting filing.

Reverse domain name hijacking graphic

A Netherlands company that uses the domain 123inkt.nl to sell ink products has been found guilty of reverse domain name hijacking over the domain 123ink.com. Inkt is Dutch for ink.

Digital Revolution B.V. filed the dispute with World Intellectual Property Organization.

John Berryhill, defending 123Ink.com, noted that “123” is a common prefix for domain names. It also seemed that, while 123inkt.nl might have been in existence before the Respondent acquired 123ink.com, there weren’t proven trademark rights in the term at that time. 123Inkt.nl also focuses on the Netherlands and Belgium for its business, not the United States where the Respondent is based.

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

In this case the Complainant’s registered trade mark rights were granted after the Respondent’s acquisition of the disputed domain name. There is no evidence before the Panel that would support a finding that by that date the Complainant had enjoyed such a substantial reputation as a result of the use of its unregistered 123INKT mark or domain name, that the Complainant enjoyed protectable unregistered rights in its mark. As discussed above, there is also nothing to suggest that either before 2009 or since that time, that the reputation attaching to the Complainant’s mark and to the disputed domain name extended beyond the Netherlands or Belgium to the United States where the Respondent is based. As a result, the Panel finds that it was impossible from the outset for the Complainant to show that the Respondent had registered the disputed domain name in bad faith as required under the third element of the Policy.

Brazil company guilty of reverse domain name hijacking

by — Uncategorized 0 Comments

Company went after the .com version of its country code domain name.

Reverse domain name hijacking graphic

A World Intellectual Property Organization panelist has found a company in Brazil guilty of reverse domain name hijacking despite the owner of the domain name not responding to the UDRP.

Panelist Wilson Pinheiro Jabur made the finding against 2XT Tecnologia e Comercio de Informática Ltda, which owns the domain name passagenspromo.com.br. The company filed the case against the matching .com domain, passagenspromo.com.

The domain was registered in 2013 before the Complainant started using the mark. The domain means “promo tickets” in Portuguese.

The Complainant characterized the domain as typosquatting and argued that the registrant intended to sell it to the highest bidder given that it did not take any steps to acquire trademark rights over the term.

Historical Whois records can’t confirm the original registrant of the domain due to Whois privacy but the domain has always been registered at PublicDomainRegistry.

The Complainant basically agreed that it was registered in 2013, which is fatal to its case. In finding reverse domain name hijacking, the panelist wrote:

In the present case, the Panel considers that the Complainant has been guilty of RDNH due to the fact that it has failed by a large margin, since the Complainant knew or at least should have known that it did not possess enough evidence to prove at least one of the essential elements contained in paragraph 4(a) of the Policy.

The Complainant’s representative quoted UDRP case law and the Panel thinks it is unlikely that he was unaware of (i) the consensus set forth in section 3.8 of the WIPO Overview 3.0; and (ii) the current overwhelming view of UDRP panelists as to the need to prove registration and use in bad faith.

WIPO panel says Celgene tried to mislead it in cybersquatting claim

by — Policy & Law 3 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.