“Any reasonable investigation would have revealed that this was a Complaint that could not have succeeded,” panelist says.

A World Intellectual Property Organization panel has found Playtech Software Limited to have engaged in reverse domain name hijacking over the domain Playtechla.com. Playtech uses the domain name Playtech.com.

The company filed a cybersquatting complaint under UDRP against Play Technologies S.A.S, a Colombian development firm. Playtech said it became aware of the respondent and its domain name at a trade show in 2017.

It’s quite clear that the domain name owner is operating a business at the domain name Playtechla.com, and this contributed to panelist Nicholas Smith determining that the case was brought in bad faith:

The Panel finds that the decision to file a Complaint when the Complainant was aware of the Respondent’s prima facie legitimate use of the Domain Name and in circumstances where its arguments as to the Respondent’s lack of bona fide use had no realistic prospect of success constitutes reverse domain name hijacking. Any reasonable investigation would have revealed that this was a Complaint that could not have succeeded.

Smith also noted that “This case illustrates the widely recognized principle that the Policy is designed to deal with clear cases of cybersquatting.” That’s something some panelists lose sight of.

The complainant was represented by Linklaters in London.

Complainants first tried to buy domain before filing UDRP.

FPT Industrie S.p.a. and REM Industrie S.r.l. have been found to have engaged in reverse domain name hijacking in a domain dispute they brought against domain investor HugeDomains.

The companies, which use the domain fptfastmill.com, filed a UDRP with World Intellectual Property Organization for the domain name FastMill.com.

HugeDomains pointed out that the complainant first tried to buy the domain and subsequently filed a trademark application for Fast Mill before filing the complaint. The complainants do have a trademark for FPT Fast Mill.

The decision has good language for domain name investors, pointing out that the registration of generic and dictionary term domain names for resale can establish rights or legitimate interests in the domain names.

In finding reverse domain name hijacking, the panel wrote:

In this case, the Complainants filed the Complaint only after its attempt to purchase the Disputed Domain Name from the Respondent was unsuccessful (i.e. the Respondent did not respond to any of the Complainants’ offers). The general weak nature of the Complaint, the lack of evidence and the Complainants failure to fully address the 3 requirements under paragraph 4(a) of the Policy demonstrates that the Complainants were likely aware that they did not have a legitimate case against the Respondent, and filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith. This is supported by the fact that the Complainants only sought to apply for the registration of the FAST MILL mark in Italy after its offer to purchase the Disputed Domain Name from the Respondent remained unanswered. It is also clear that this was done in a misguided attempt to bolster or lend legitimacy to the Complaint. The Complainants also misrepresented the facts of the case in the Complaint. For example, the Complainants state that the Disputed Domain Name “has been offered for selling to the complainant [sic]”. However, no such offer was directly made to the Complainants – it was the Complainants who approached the Respondent and offered to purchase the Disputed Domain Name for USD 1,500.

Gone fishin’.

Cloud services company Pilotfish Networks AB, which uses the Swedish country code domain Pilotfish.se, has been found to have engaged in reverse domain name hijacking over the domain Pilotfish.com.

The company filed a UDRP against Austin, Texas-based company Dynamo.com that claimed Dynamo was cybersquatting with its registration of the domain name Pilotfish.com.

A three-person World Intellectual Property Organization panel found in Dynamo’s favor and wrote that “Any reasonable investigation would have revealed that this was a Complaint that could not have possibly succeeded.”

Among the panel’s concerns was Pilotfish’s claim that the current owner of the domain didn’t register it until 2006, which was after Pilotfish filed for a trademark. While the registrant of record changed in 2006, it was really a name change and the domain was under the same person’s control. The panel was troubled that Dynamo.com had already provided evidence of this to Pilotfish yet Pilotfish still made this claim in its case.

Pilotfish also did not provide evidence of use dating back to when it said it used the domain, which might predate Dynamo.com’s ownership of the domain.

The panel summarized:

The Panel finds that the decision to file a Complaint when the Complainant was aware through pre-Complaint correspondence that the Domain Name corresponded to a dictionary word, had never been used to target its business, was registered prior to (on the evidence the Complainant puts before the Panel) any reputation arising in the PILOTFISH Mark and was registered to an entity that indicated in the strongest terms that it was not interested in selling the Domain Name to it, constitutes reverse domain name hijacking.