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Spase.io tries reverse domain name hijacking

by — Policy & Law 0 Comments

A new company goes after domain registered in 2005.

Picture of masked man with the words reverse domain name hijacking

The owner of a business called Spase has been found to have tried reverse domain name hijacking the domain name Spase.com.

Spase is a service that converts photographs into 3D models. The business was just launched last year at Spase.io. The owner of Spase.com registered it in 2005.

In other words, this was a dead-on-arrival UDRP filing. The Complainant could not show that the domain registrant acquired the domain in 2005 to target a business that launched in 2019.

It’s another example of a case that could have been avoided if UDRP providers would ask a simple question on their intake form:

Do you claim trademark rights that predate the current registrant’s registration of the domain name?

If the answer is no, the UDRP provider can explain to the Complainant that they don’t understand the policy and are wasting their time and money.

In this case, the Complainant wasted money filing the UDRP and paying for a three-member panel as requested by the Respondent. The Respondent had to pay for the panel and hire an attorney. It was a waste of both parties’ time.

The Complainant, Sahil Gupta, was internally represented. Greenberg & Lieberman represented the domain owner Mrs. Jello, LLC. William Towns, Knud Wallberg, and Neil Brown decided the case for World Intellectual Property Organization.

 

Saudi Aramco tries to take dead man’s domain name

by — Policy & Law 0 Comments

Company tries to use UDRP to take domain registered in 1997 by now-deceased man.

Saudi Aramco logo

One of the world’s most valuable companies just plumbed new depths in cybersquatting disputes.

Saudi Aramco, the $133 billion Saudi Arabian oil company, filed trademarks for a new brand called Orizon last year. Naturally, the company would like the domain Orizon.com.

But there’s a problem.

Orizon.com was registered in 1997 by Orizon Multimedia Inc. The company used the domain for its business but then shut down. Apparently, the owner of the business passed away last year.

So Saudi Aramco decided to file a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) to try to get the domain.

Here’s the thing: in order to win a UDRP case, a trademark holder must show that the domain was registered in bad faith when it was initially registered.

Clearly, the registrant did not register the domain in bad faith since he used it for his legitimate business. Oh, and he registered it more than two decades before Saudi Aramco decided to adopt it as a brand, so it wasn’t registered to target Saudi Aramco.

World Intellectual Property Organization panelist Nick Gardner correctly ruled that this isn’t a case of cybersquatting. He considered if it was reverse domain name hijacking but, ultimately, gave Saudi Aramco a pass. One of his reasons: since the domain owner is dead, he wasn’t burdened by Saudi Aramco’s filing.

Fish & Richardson P.C. represented Saudi Aramco.

This should have been reverse domain name hijacking

by — Policy & Law 0 Comments

This UDRP should have never been filed.

Tub of "I can't believe it's not butter" with RDNH replacing the word butter

OSRAM GmbH, a German lighting company, has lost a UDRP against a Vietnam-based cloud services consultancy. Even though the Respondent didn’t reply to the dispute, this seems like a clear cut case of reverse domain name hijacking.

The lighting company filed the dispute against OSAM.cloud. The domain name is one letter off from its trademark, and this could be a case of cybersquatting under very different circumstances.

OSAM.cloud forwards to OSAM.io, the website for a cloud consulting company in Vietnam. It clearly uses the domain name for a real business.

The lighting company offers some cloud services and connected services, hence its argument for cybersquatting. But its complaint is way off the mark.

OSRAM argued:

Respondent’s choice of the disputed domain name, which is identical to the well-known Complainant’s registered trademark ‘OSRAM’, clearly indicates bad faith intent to register and use of the disputed domain name. Apart from the above, the Respondent has not attempted to make any bona fide use of the disputed domain name. […] It is obvious that the Complainant’s famous trademark is being used in order to attract potential buyers to the website to which the disputed domain name resolves. Here, the Respondent practically using the Complainant’s trademark color and stylization knows about the worldwide well-known Complainant’s trademarks ‘OSRAM’.”

To suggest that the Respondent is using the domain to confuse OSRAM customers strains credulity.

In denying OSRAM’s case, panelist Scott Blackmer wrote:

As noted in the factual discussion above, the Respondent’s website reflects a registered and fully functioning consultancy business operating since 2017 with a website at “www.osam.io”. The Domain Name is a relevant addition to the Respondent’s domain name portfolio, as its gTLD “.cloud” is pertinent to the cloud services business in which the Respondent is engaged. The Respondent advertises consulting to assist clients in using AWS-hosted cloud services, and the Respondent is indeed listed as a partner by AWS since 2017. The Respondent appears in multiple media articles and directories, consistent with the story told on the Respondent’s website. On the face of it, there is nothing on the Respondent’s website that mentions the Complainant or competes with its business. There is simply an unrelated business with a name that differs from the Complainant’s mark by one letter. On this record, the Panel does not find persuasive evidence to support the Complainant’s inference that the Respondent chose the name of its business and the corresponding Domain Name in an attempt to misdirect Internet users for commercial gain.

OSRAM also argued that the logo on OSAM’s website was similar. The panelist (rightfully) noted that this is not the case.

Blackmer deserves kudos for doing his simple research of the Respondent in light of no response. I think he should have gone a step further and found reverse domain name hijacking.

If you saw Sars.app, what would you assume it’s for?

by — Policy & Law 2 Comments

Probably not the South African Revenue Service.

Photo of globe with a surgical mask held up with latex gloves and the words "covid-19"

It’s 2020. There’s a pandemic because of SARS-CoV-2 (COVID-19). Someone in China registers the domain name Sars.app.

Why would you assume the person in China registered the domain? Probably because of the pandemic.

Unless, of course, you are the taxing authority in South Africa.

South African Revenue Service, or SARS, filed a cybersquatting dispute against the domain name. The organization uses the domain name sars.gov.za.

It argued:

The Respondent was undoubtedly aware of the Complainant’s rights in the SARS mark when the disputed domain name was registered. This is evident from the fact that the disputed domain name incorporates the SARS mark. The SARS mark has acquired a substantial reputation.

Unsurprisingly, World Intellectual Property Organization panelist Matthew Kennedy suggested that perhaps the Chinese registrant had something on his mind other than the taxing authorities in South Africa when he registered the domain:

The Panel considers that an alternative explanation for the registration of the disputed domain name is apparent but has somewhat surprisingly not been addressed by the Complainant, namely that SARS has a widely-known dictionary meaning…

…the Panel considers it a matter of public record that a novel coronavirus outbreak was reported in China, where the Respondent is resident, shortly before the disputed domain name was registered in January 2020….

Kennedy denied the complaint.

Shredder company Kobra gets shredded in UDRP

by — Policy & Law 2 Comments

Company tries to reverse domain name hijack Kobra.com.

Picture of masked man with the words reverse domain name hijacking

Elcoman Srl, an Italian maker of shredding products under the brand name Kobra, has been found to have engaged in reverse domain name hijacking for the domain name Kobra.com.

The company filed a cybersquatting dispute over the domain name with World Intellectual Property Organization. Panelist Scott Blackmer determined that Elcoman did not show that the domain name was registered in bad faith.

Kobra.com was registered in 1999, and it appears that the current owner has controlled the domain name since at least 2002. During that time, he had a website related to Kobra financial trading software.

In finding reverse domain name hijacking, Blackmer wrote:

The Complainant here did not properly investigate the facts, alleging that the Respondent “has merely passively held the Domain Name,” when a simple visit to the Internet Archive’s Wayback Machine would have revealed years of use for at least a minimal blog site on topics relevant to the meaning of the name to a relevant audience, which would make it very difficult to establish bad faith. The Complainant is represented by legal counsel, but the Complaint is devoid of legal citations and shows no awareness of relevant resources, such as the WIPO Overview 3.0. The Complaint deals with a Domain Name registered roughly 20 years ago but does not satisfactorily address the obvious need to establish the likelihood that the Respondent was aware of the trademark at the time of the Domain Name registration, or the improbability that the Domain Name was acquired “primarily for the purpose of selling” it to the Complainant, given that the Respondent made no motion to do so for decades. The Complainant argues summarily that the Respondent’s bad faith in registration can be inferred because the Respondent (or at least the broker) demanded a high price when the Complainant recently decided, in its own words, to purchase the Domain Name “on a very urgent basis”. Refusal to sell is not necessarily bad faith, and the UDRP is not designed to assess claims geared to putting a dormant domain name to use.

Elcoman was represented by Andrea Colombo. The domain owner represented himself.

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