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CIIDRC issues its first reverse domain name hijacking ruling

by — Policy & Law 1 Comment

Panel finds water utility compliance company Klir guilty of reverse domain name hijacking.

Logo for Canadian International Internet Dispute Centre shows CIIDRC text inside a stylized circleThe Canadian International Internet Dispute Centre (CIIDRC), a UDRP forum accredited by ICANN in 2019, has issued its first reverse domain name hijacking decision.

A three-person panel found that Klir Platform Europe Limited filed its case against klir.com in bad faith. The Complainant helps water and sewer utilities with compliance and uses the domain name klir.io.

Klir tried the buy the domain name many times over the past few years but would not meet the domain owner’s asking price. It then filed the UDRP in a classic “Plan B” attempt at reverse domain name hijacking.

John Berryhill, attorney for the Respondent, found something odd when defending the case. The Complainant was formed in 2014 and his client registered the domain in 2016. But…

The Complainant was not founded in 2014 as “Klir Platform Europe Limited”. The Irish Companies Registration Office record for the Complainant shows that the company founded in 2014 was named “Elm Consulting & Solutions Limited” and changed its name to “Klir Platform Europe Limited” by resolution dated August 14, 2018 and recorded on September 12, 2018. That date is consistent with the formation of “Klir Trading Company Limited” on January 2, 2018 and with the registration of Complainant’s klir.io domain name on September 20, 2017.

So there was no way that the domain owner registered the domain in bad faith to target the Complainant.

The registrant is a domain investor with a collection of four-letter domains.

Another interesting note is that the Complainant stated, “Because the Complainant does not have the klir.com domain name, marketing emails are often blocked by anti-spam software or ignored.”

CIIDRC has ruled on 29 UDRP cases to date. It also handles disputes for .CA domains under the CDRP.

Bill Mayo of Stratford Group represented the Complainant found guilty of reverse domain name hijacking.

Threats don’t play well in cybersquatting disputes

by — Policy & Law 3 Comments

These two domain owners tried to play hardball and got nothing.

How you approach a potential buyer for your domain impacts what happens in a UDRP hearing. Here are two examples.

A World Intellectual Property Organization ordered Magna.co transferred to Magna International Inc., a company that uses Magna.com.

Magna is a dictionary word and the name of a town. A registrant could fairly register it in good faith. But when you use the following approach to try to sell it, a UDRP panel is likely to view you unfavorably.

The owner of Magna.co sent a LinkedIn message to someone at Magna International in August 2020:

I own Magna.co domain name and I am reaching out to few companies to explore a possible sale of the domain name.

When I setup [sic] the email address for magna.co to contact potential end users, I started receiving business emails concerning your company (check attachment).

Would you be interested in owning this domain name to protect your business information and brand

Magna International rejected the offer. The Respondent then apparently raised his price before sending this message:

Thank you for your reply. I thought its [sic] better that your company owns this domain name. In the last three weeks I got 350+ emails concerning your company.

Imagine your competitors American Axle & Manufacturing, Lear Corporation, Visteon, Faurecia, Linamar, Aptiv or Gentex owning the domain name and what information they can extract from the emails to gain advantage on your company. It can be a minor leak with serious consequences.

Once the domain is sold to an end user its [sic] very difficult and expensive to own. If you are reconsidering this matter, Visit magna.co and submit your offer.

In another recent case, T. Rowe Price CEO Bill Stromberg won a UDRP against the owner of BillStromgberg.com. It would be harder for the owner of this domain to justify registering the domain in good faith. But its sales pitch to Stromberg sealed its fate in the ensuing UDRP:

Subject: Urgent – CEO Domain

Hello Mr. Stromberg,

Without prejudice, we are getting in touch with you, with regards to the following domain:

billstromberg.com [billstromberg.com]

We are a brand protection agency and our team has secured this domain. Our team values it at $9,725.

The CEO is an integral part of a company. If a competitor were to get control of a CEO’s domain name and point it to one of their assets or worse still, to malicious websites, it would be incredibly embarrassing for a public company. It could hurt sales as well as brand reputation. Shareholders wouldn’t be too pleased once it reaches the media. Especially as the above domain will rank number one on Google.

For that reason, we always advise clients to secure their personal domain names as soon as possible. The domain can be used by anyone, for anything. It’s a great asset to have in your control whether used or not. This prevents potential abuse from competitors as well as disgruntled employees.

We are here to help prevent that and to protect your assets. Please do get in touch, if you’re interested.

Thanks,

Lewis Davids
Victor Platinum

Both domain name owners attempted to defend the domains in the UDRPs but they had steep curves to overcome.

 

One.com loses cybersquatting dispute against 0ne.com

by — Policy & Law 2 Comments

Domain name owner acquired the domain in an expired domain auction last year.

The words "one.com vs. 0ne.com" in white letters on a black background with a blue border

Domain name and hosting company One.com Group AB has lost a UDRP it filed against the domain name 0ne.com, with a zero replacing the o.

Cryptocurrency investor Stanislav Nikolskyi acquired the domain name in a DropCatch.com auction for $2,305 in July 2020. He said he acquired the domain name because wallet address in Ethereum start with the number 0.

A Czech Arbitration Court panelist agreed with One.com that the domain name was confusingly similar to its mark, but found in favor of the Respondent on rights and legitimate interests and registration and use in bad faith.

Panelist Victoria McEvedy noted that using a generic word as a trademark comes with limitations:

No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not really possible with a number or a common word –so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use. Furthermore, consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.

In pre-dispute correspondence, Nikolskyi informed One.com Group:

…You can pass these two options to your ‘Client’: a. Offer price and buy it out without wasting time and resources for legal battle (and then eventually loosing [sic] it) b. Start a UDRP claim, I’m in no rush and have resources to defend my name, ‘very similar’ is a weak argument and I had experiences in past, so in both cases I’m pretty confident. Either I get a deal, or I get a win under my belt which only adds value to credibility to the name…

Apparently, he was right.

Advokat Lisbet Andersen represented One.com Group. Cylaw Solutions represented the domain name owner.

Reverse domain name hijacking in four letter domains case

by — Policy & Law 2 Comments

Panel said Complainant’s representative showed an “alarming unfamiliarity with the UDRP”.

Picture of masked man with the words reverse domain name hijacking

A World Intellectual Property Organization (WIPO) panel has found two Indian companies to have engaged in reverse domain name hijacking. It added some especially harsh words for the Complainants’ attorney.

HSIL Limited, Somany Home Innovation Limited and SHIL Ltd., Brilloca Limited, two related companies, filed the complaint against Get On The Web Limited. They argued that the latter’s ownership of HSIL.com and SHIL.com constituted cybersquatting on their marks.

Never mind that the Respondent registered the domains before the Complainants had rights to trademarks in HSIL and SHIL. And never mind that the Respondent previously used the domain names for its business.

The panel found that the Complainants failed on all three prongs of the UDRP for the domain name SHIL.com, and on the last two for HSIL.com.

The three-person WIPO panel listed five reasons the complaint was reverse domain name hijacking. Summing up the case, it wrote:

In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name.  Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties’ and the court’s time.  This Panel is limited to a find of abuse, which it readily imposes.

Manav Gupta represented the Complainants and John Berryhill represented the Respondent.

Analyzing HugeDomains’ latest UDRP win

by — Policy & Law 4 Comments

One panelist dissented in a case of a trademark vs. common name.

Blue image with the letters UDRP

HugeDomains has successfully defended its domain name Affron.com in a UDRP cybersquatting dispute.

Pharmactive Biotech Products, S.L., a Spanish company that sells a saffron extract under the brand name Affron, filed the dispute against the domain name investment company.

While the Complainant has a trademark for Affron, HugeDomains argued that it’s also a common name and business name to which the Complainant does not have exclusive rights.

HugeDomains acquired the domain name in 2013. The Complainant claims trademark rights dating 2012, although the exact use of its trademark worldwide before 2013 is disputed.

The majority of the panel found that the domain was not registered and used in bad faith and that the Complainant didn’t show that HugeDomains lacked rights or legitimate interests in the domain name.

Panelist Alejandro Touriño, a lawyer in Spain, dissented. I often find that a dissenting panelist in a three-person panel is the only one from the same country as the Complainant.

Touriño mostly relied on Pharmactive Biotech Products’ trademark for Affron in arguing that the domain should be transferred. He wrote, “it is likely that the Respondent knew (or should have known) of the Complainant’s trademark when it registered the domain name.”

Even if HugeDomains did know of the trademark, HugeDomains’ argument is that the trademark for Affron did not give it worldwide exclusive rights to the mark outside of its product category.

The oddest thing about this case is that HugeDomains was asking only $5,195 for the domain. Between the lawyers and the WIPO fees, I suspect the Complainant spent more than that to file its case. And it still doesn’t have the domain to show for it.

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