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No reverse domain name hijacking for ignorant filers

by — Policy & Law 3 Comments

Some panelists give UDRP Complainants a pass if they don’t hire a lawyer.

Picture of masked man with the words reverse domain name hijacking

UDRP panelists will sometimes find that a cybersquatting case was filed in bad faith, aka reverse domain name hijacking. They particularly call out Complainants who are represented by counsel because “they should know better.”

But what about the Complainant who doesn’t hire an attorney and doesn’t know any better? Sometimes, panelists give them a pass.

The latest example of this is for the domain Gaygle.com. Philip Colavito, who runs a business on the matching .co domain, filed a UDRP. The owner of the domain registered it more than 15 years before Colavito started using the name. In other words, the case was dead on arrival.

Colavito apparently didn’t hire a lawyer. Nor did he put forth a good case.

Panelist Robert Badgley wrote that the Complainant “misunderstand[s] domain names, how they are acquired and transferred, and the difference between a domain name and a URL.”

Yet, for this same reason, Badgley decided that he wouldn’t find reverse domain name hijacking.

But the domain name owner did hire counsel, which meant it had to pay someone to defend the case. That doesn’t seem fair.

Badgley seems to have a soft spot for misconceived complaints.

Entrepreneur takes a second stab at Spase.com in UDRP

by — Policy & Law 5 Comments

One reverse domain name hijacking finding was not enough for this entrepreneur.

The words "Reverse domain name hijacking" and a computing image of a skull

Oh, dear. Say it ain’t so.

An entrepreneur who was found to have engaged in reverse domain name hijacking for the domain Spase.com earlier this year is trying again.

Spase, Inc., which runs a business as Spase.io, just filed a UDRP against the domain at National Arbitration Forum.

The company’s founder, Sahil Gupta, filed a previous case against domain owner Mrs Jello LLC at World Intellectual Property Organization. It was an easy case for the panel because Mrs Jello LLC acquired the domain in 2005, well before Gupta started his business in 2019.

UDRP panels frown upon people refiling cases unless new information comes to light that could not have been known when the original case was filed. Gupta argues that new information about Spase.com has come to light: that popular security software flags Spase.com as a dangerous site.

Gupta filed a complaint with Enom that resulted in the DNS for the domain being suspended.

It appears that the domain has been parked at ParkingSpa.com the entire time. Internet security software sometimes flags parked pages as malicious.

Of course, even if Mrs Jello were distributing malware on the domain, it wouldn’t change the crux of the case.

Regrettably, it does not seem that Gupta hired an attorney to refile the case. I think this was a risky move.

WIPO gets 50,000th cybersquatting case

by — Policy & Law 2 Comments

Organization receives its 50,000th cybersquatting case over two decades.

Blue image with the letters UDRP

World Intellectual Property Organization (WIPO) reports that it has received its 50,000th cybersquatting case.

The majority of these are under the Uniform Domain Name Dispute Resolution Policy (UDRP), a system put in place by ICANN to efficiently address cybersquatting disputes.

While multiple organizations resolve UDRP cases, WIPO is by far the biggest.

For the most part, UDRP has efficiently resolved the clear-cut cases of cybersquatting that it was created for. The majority of cases are rightfully found for the Complainant without the domain name owner putting up a fight. UDRP saves both the trademark owners and the domain owners money that would have been spent on expensive lawsuits. The only two remedies for winning a UDRP are canceling the domain registration or transferring it to the trademark holder.

Unfortunately, some companies have abused UDRP in attempts to get valuable domain names without paying for them, a practice called Reverse Domain Name Hijacking.

WIPO says cases are up 11% this year through October compared to the same 10 months in 2019. It suggests this is due to increased online activity in the wake of the pandemic.

Hair loss cybersquatting fight ends in reverse domain name hijacking

by — Policy & Law 2 Comments

I can understand why the Respondent was pulling his hair out over this dispute.

Picture of masked man with the words reverse domain name hijacking

A National Arbitration Forum panel has found Florida company Gapardis Health and Beauty, Inc. to have engaged in reverse domain name hijacking over the domain name MinoPlus .com.

The Complainant offers a natural topical product called Mino Plus that it says aids with hair growth. The Respondent, Jose Rojas of Haiti, sells a product called Minoval Plus for hair regrowth using Minoxidil, the same active ingredient found in Rogaine.

Rojas registered the domain name MinoPlus .com and it resolves to a page that states, “This product is a fake…”

If you look at the two products’ packaging, it sure seems like Mino Plus has the same color and general package design as the Respondent’s Minoval Plus.

In addition to trademarks for Minoval Plus, Rojas has a trademark in Haiti for Mino Plus. Rojas said he got this trademark right after opposing a trademark application submitted in Haiti by an entity associated with the Complainant.

According to panelist David Sorkin, Gapardis Health and Beauty, Inc. did not disclose these pertinent details in its Complaint:

The Complainant identifies Respondent by name but does not indicate that Respondent is a competitor nor provide any other information regarding Respondent or his activities or trademark rights, let alone the fact that Respondent is the senior user of similar marks. Indeed, Complainant’s accusation of bad faith appears to have been carefully drafted to avoid referring to Respondent as a competitor, even though that is a condition of the applicable provision of the Policy. The Complainant also fails to mention Respondent’s rights in the MINOPLUS mark in Haiti, a fact which almost certainly would have been known to Complainant. While Complainant acquired the U.S. trademark rights in MINO PLUS subsequent to that dispute, the Panel notes that Complainant has the same physical address as its predecessor in interest, shares at least one director with the entity involved in the Haiti trademark dispute, and is represented by counsel in this proceeding. The Panel therefore considers it unlikely that Complainant could have been unaware of this prior history or its relevance to this proceeding.

Complainant knew or should have known that it could not prove that Respondent lacks rights and legitimate interests in the disputed domain name, and nevertheless initiated this proceeding in an improper effort to obtain the domain name. Furthermore, Complainant withheld relevant information in an apparent attempt to mislead the Panel regarding Respondent’s rights or legitimate interests and the circumstances under which the disputed domain name was registered. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Crypto company Ternio tries reverse domain name hijacking BlockCard.com domain name

by — Policy & Law 2 Comments

Company that uses GetBlockCard.com filed cybersquatting dispute against BlockCard.com domain name.

A picture of a man's face with an eye cover coming out of a laptop screen with the words "reverse domain name hijacking"

Blockchain and cryptocurrency company Ternio has been found to have engaged in reverse domain name hijacking over the domain name BlockCard.com. The company offers a service called BlockCard that uses the domain name GetBlockCard.com.

Simply Wireless, Inc., the Respondent in the case, acquired the domain name at Sedo on January 11, 2018.

Ternio said that it filed a trademark application with the U.S. Patent and Trademark Office On January 15, 2018 and that the Respondent acquired the domain on January 16, 2018. It used as evidence a TheDomains.com report of Sedo sales that was dated January 16, 2018.

But World Intellectual Property Organization panelist Nick Gardner pointed out that the story on TheDomains referred to “weekly” sales at Sedo, so this doesn’t show that the domain was acquired on January 15, 2018. Indeed, the Respondent submitted evidence showing that it acquired the domain on January 11.

This information is public, too, if you dig for it. NameBio has an entry showing the sale on January 11, 2018 for $6,200.

It turns out that the evidence Ternio submitted shows that the Whois data for the domain was updated on January 14, 2018. Apparently, Ternio ignored this date in its complaint.

Ternio originally filed the trademark on an intent-to-use trademark. This was not discussed in the decision, and it probably doesn’t matter. If the Respondent had acquired the domain the day after the Complainant filed a trademark application, it would look suspicious.

But this is simply not the case, and the Complainant should have known this.

Panelist Gardner found reverse domain name hijacking for many reasons. In addition to the date issue, the Ternio submitted over 400 pages of material that it said showed the fame of the Block Card mark. But most of it was general corporate publicity that didn’t mention Block Card at all. Further, the publicity postdated the Respondent’s purchase of the domain.

Garner wrote:

Overall the Panel has reached the conclusion that the Complaint deliberately overstates the Complainant’s case in a way which could well have misled the Panel, particularly if no response had been filed. The Panel considers that merits a finding of Reverse Domain Name Hijacking.

Zlatkin Wong LLP represented Ternio, LLC. No lawyer is listed as representing Simply Wireless.

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