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Loco UDRP ends in reverse domain name hijacking

by — Policy & Law 2 Comments

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.

 

Rob Monster sues after losing UDRP for BC30.com

by — Policy & Law 13 Comments

Monster chose to blast WIPO rather than respond to the three elements of UDRP.

Picture of Rob Monster, CEO of Epik

Rob Monster has filed a lawsuit after losing a UDRP for BC30.com.

Rob Monster, the CEO of domain name registrar Epik, has filed a lawsuit after losing the domain name BC30.com in a UDRP.

Ganeden Biotech, Inc. filed a UDRP with World Intellectual Property Organization (WIPO) against the domain name in December.

Instead of formally responding to the UDRP, Monster sent an email that the WIPO panelist characterized as “needless derogatory remarks (and threats) about the UDRP and the Center.”

While the UDRP does not detail Monster’s message, he posted it publicly on domain name forum NamePros. The email stated that Monster would publicly critique the decision should he lose the case.

Panelist John Swinson wasn’t amused, and he also didn’t have affirmative defenses to the Complainant’s submissions. He found in favor of the Complainant.

Now Monster has filed a lawsuit (pdf) to stay the transfer. He’s also asking for damages.

Monster filed it in U.S. District Court in Washington, where both he and his registrar are located. Monster is representing himself in the lawsuit.

 

After selling in auction, Xtream.com owner doesn’t respond to UDRP

by — Policy & Law 10 Comments

…and loses the UDRP for a domain that just sold for $26,000.

Blue image with the letters UDRP

It makes sense to defend your domain names when they are hit with a UDRP. Especially if you have a $26,000 sale on the line.

So it’s baffling that the owner of Xtream.com didn’t respond to a UDRP filed against the domain name on January 31, the day after the domain name sold in the live NamesCon auction for $26,000.

Mediacom Communications Corporation filed the dispute and won thanks, in part, to National Arbitration Forum receiving no response in the case.

You can bet that Mediacom either became aware of the sale through auction marketing or the auction result. Or, it might have even been a losing bidder in the auction.

Regardless, the dispute decision makes no reference to the auction.

Unless Mediacom had the domain owner dead to rights somehow, the lack of response doesn’t make sense to me.

Pioneer Banks square off over .Bank domain name

by — Policy & Law 1 Comment

Both banks have a bigger problem than Pioneer.bank.

Logos for Pioneer Bank in Texas and Pioneer Bank in New Mexico

Two Pioneer Banks in different states.

Two things caught my eye when Pioneer.Bank was hit with a UDRP in January.

First, I’m familiar with the domain owner, Pioneer Bank, which is based in my old hometown of Austin.

Second, I wondered how someone could win a UDRP against a .bank domain name because the registry verifies each registrant’s standing to register the domains.

National Arbitration Forum has published its decision. Unsurprisingly, the complaint failed.

Pioneer Bank in New Mexico filed the dispute against Pioneer Bank in Texas. The latter uses the domain name for its website.

It turns out that the New Mexico bank has a beef with how the Texas bank acquired the domain name in the sunrise period. It believes that the Texas bank did not have a valid trademark that could be used in the Trademark Clearinghouse.

The panel rightfully pointed out that the UDRP is not the proper policy for such a dispute.

The .bank top level domain had a sunrise dispute policy but the deadline for that has passed.

The more significant risk for these two banks is that neither owns PioneerBank .com, which forwards through zero click. When I visited it this morning, it forwarded me to one of those scammy Chrome extension pages (see below). Making it worse: Pioneer Bank in New Mexico uses an absolutely horrible domain name: PioneerBnk.com (note the missing ‘a’). According to National Arbitration Forum’s website, an entity filed a UDRP against PioneerBank .com in 2014, but it still shows as pending.

Graphic of misleading chrome extension installer at PioneerBank.com

Do NOT follow this link or you will be banned from the site!