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More cybersquatting cases but fewer domains at WIPO in 2018

by — Policy & Law 0 Comments

Filings up but number of domains down at largest UDRP organization.

Graph showing the number of domains subject to cybersquatting complaints at WIPO in 2018

WIPO heard 3,447 cybersquatting cases covering 5,655 domains in 2018. Chart courtesy WIPO.

World Intellectual Property Organization (WIPO) has issued its annual release about how many cybersquatting cases it heard under UDRP and similar policies.

WIPO’s headline says it’s a record, and that’s true when considering the number of cases (3,447). But the number of domains involved (5,665) was only the third highest (see chart).

Another thing to point out is that there will be a lot of false headlines saying that cybersquatting has hit a new high. Remember that WIPO is just one of the providers for UDRP. It has tended to win more market share over time.

Also, case filings do not necessarily correlate to the amount of cybersquatting.

I expect UDRP filings to increase in 2019 because of GDPR. Companies that question whether a domain constitutes cybersquatting have difficulty figuring out if the registrant has rights or legitimate interests in the domain because they can’t research the registrant. They might be dissuaded from filing a complaint depending on who the owner is.

Of the 5,665 domains, 5022 were gTLDs and 633 were ccTLDs.

.Com, .Net and .Org were unsurprisingly the top gTLDs. .Nl, .Co and .Se led the way for ccTLDs.

According to RDNH.com, there were 28 reverse domain name hijacking findings at WIPO last year.

Bad Karma: Reverse domain name hijacking in Karma.com case

by — Policy & Law 9 Comments

An ironic finding in Karma.com UDRP.

Graphical element of the word Karma

Karma is….a company being found guilty of reverse domain name hijacking for the domain Karma.com while being represented by a lawyer who is also a UDRP panelist.

Karma International, LLC filed a UDRP against Karma.com and struck out on all three counts. The panel found that it didn’t show that the domain was confusingly similar to a mark in which it has rights, nor that the domain owner lacked a legitimate interest in the domain, nor that he registered it in bad faith.

That’s a rare trifecta.

The case is rather stunning. The Complainant tried to buy the domain name in 2009 and failed. Ten years later it followed up with a UDRP.

The domain owner registered the domain way back in 1994.

In other words, this was a dead-on-arrival case.

In finding reverse domain name hijacking, the three-person National Arbitration Forum panel wrote:

…The Panel is in agreement with Respondent’s submissions and finds, on any construction of the facts, that Complainant knew or should have known that it was unable to prove its Complaint. The explicit claims to bad faith registration and use made in the Complaint are largely specious and the accusations levelled at Respondent are groundless and malicious.

This is not the picture of an assiduous infringer slowly engineering the downfall of the rightful trademark owner. Indeed, on one construction of the evidence, it could be said that the Complaint was the design of a party disappointed by its failure, ten years ago, to secure the purchase of the domain name, who has turned the Policy against Respondent, indifferent to the integrity of that party.

Karma International was represented by Kristin Kosinski of Cislo & Thomas LLP. According to her bio, she is a panelist for National Arbitration Forum. I cannot find any cases she has heard as a panelist, and perhaps it’s best that she not decide cases given filing an RDNH case.

The domain name owner was represented by David Weslow of Wiley Rein LLP.

Dialoga Servicios Interactivos, S.A. tries reverse domain name hijacking

by — Policy & Law 2 Comments

Company mistakenly included internal communications about bad faith in its submission.

Reverse domain name hijacking graphic

Dialoga Servicios Interactivos, S.A. of Spain has been found to have engaged in reverse domain name hijacking over the domain name Dialoga.com.

The company filed a UDRP against the domain name in 2017 and lost. That domain registrant let the domain expire and a domain investor bought it. Dialoga tried to buy the domain from the domain investor and ultimately filed another UDRP.

Two things were problematic for the Complainant. First, dialoga is a dictionary word in at least three major languages.

Second, the Complainant appears to have accidentally included internal communications about its intent in inquiring about buying the domain name. The communications suggest that it had an ulterior motive in its purchase inquiry:

In an internal communication in Spanish whose contents appear to have been inadvertently reproduced by the Complainant in the evidence submitted with the Complaint, and which has been translated by the Respondent, the Complainant proposes to call the Respondent and indicate that it is only interested in a purchase of the disputed domain name and would offer EUR 1,500. The Complainant notes that “the idea is to get them to imply that they will then do something else with it… something we can hold on to in order to prove bad faith on his part…”

Whoops.

LetsLaw represented the Complainant. Muscovitch Law P.C. represented the Respondent.

Wow, this WIPO panelist should have considered RDNH

by — Policy & Law 8 Comments

This sure seems like an abuse of policy to me.

I just read the decision in a UDRP for SecretLab.com and TheSecretLab.com and I’m flumoxed as to why WIPO panelist Clive L. Elliott didn’t consider reverse domain name hijacking. The Respondent might not have asked for it, but Elliott still should have considered it.

1. The Respondent registered the domain names some 16 years before the Complainant existed.

2. The Complainant offered $20,000 for the domains before filing the UDRP.

3. According to the respondent, “Complainant contacted Respondent after the commencement of this proceeding and indicated that the proceeding was instituted to help Complainant gain leverage in its efforts to buy the Domain Names.”

That’s an abuse of policy if I’ve ever seen one. I mean, check out this part of the Complainant’s argument:

Complainant considers Respondent has registered and is continuing to hold and use the Domain Names in bad faith, having not used the Domain Names for over 20 years, and with the specific intent to take advantage of inadvertent mistakes by the Internet.

Complainant goes on to assert that there is no evidence that the Domain Names have been used in connection with a bona fide offering of goods or services, and nor is Respondent making a legitimate noncommercial nor fair use of the Domain Names.

Complainant submits that this disrupts Complainant’s business and frustrates Complainant’s customers, or potential customers, who, not realising their mistake, are apt to blame Complainant for not having the web presence they expected when they reach the landing page.

This is a classic case of a company wanting to get domain names that were registered before it existed. It tried to buy them but got frustrated and filed a UDRP.

No reverse domain name hijacking in VDG.com case

by — Policy & Law 0 Comments

Complainant loses cybersquatting dispute but panel doesn’t find RDNH.

Van der Graaf Inc. lost a UDRP cybersquatting dispute over the domain name VDG.com, but the panel stopped short of finding the company guilty of reverse domain name hijacking.

A three-person World Intellectual Property Organization panel determined that Van der Graaf did not show that the domain was registered and used in bad faith. When it filed the case it believed the domain name transferred owners after the company started using its trade name in 2018. The respondent proved that he registered it in 2017.

Even if he had registered it afterward, the panel would have considered the value of the domain name as a three letter domain. Van der Graaf tried to argue that VDG was unique to its company:

Moreover, the Respondent would have been aware that VDG is neither a descriptive term, nor a common three-letter acronym used by many third parties for a variety of services, but the specific trademark in which the Complainant had established rights. A simple search of the Canadian trademarks database reveals that the Complainant is the only applicant for the VDG trademark. Similarly, a search of the European Union trademark database reveals that the Complainant is one of only two registrants of the VDG trademark for unrelated goods and services, while a search of the United States trademark database reveals that besides the Complainant there are only two registered owners of the VDG trademark for unrelated goods and services. According to the Complainant, these circumstances show that the Registrant had targeted the VDG trademark of the Complainant.

This argument undermines the idea that it is the sole owner of VDG. The are other companies using VDG. When I search on Google in the U.S., the first page of results relate to two other firms that use the acronym VDG.

Ultimately, the panel cited the change in Whois record and the Complainant’s belief that the domain had changed hands after it starting using its name as a reason for not finding reverse domain name hijacking.

Piasetzki Nenniger Kvas LLP represented the Complainant. Wiley Rein LLP represented the domain name owner.