Large IT company resorts to reverse domain name hijacking.
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.