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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.

WIPO panel says Celgene tried to mislead it in cybersquatting claim

by — Policy & Law 3 Comments

Panel says Celgene left important communications out of filing.

Picture of CelGene.com URL and website.

CellGene.com is one letter off from CelGene.com, but that doesn’t make it cybersquatting.

A three-person World Intellectual Property Organization panel has found Celgene Corporation (NASDAQ: CELG) engaged in reverse domain name hijacking over the domain name CellGene.com.

Through an intermediary, Celgene tried to buy the domain name in 2018, 15 years after the domain was registered. The domain owner responded with an asking price of $7,500.

The panel determined that Celgene did not prove that the domain owner lacked rights or legitimate interests in the domain name, nor was it registered in bad faith.

It found reverse domain name hijacking because it believes that Celgine tried to mislead it:

…In the Panel’s view, however, there is a more significant issue in the present case, which is that the Complainant has sought to mislead the Panel in accordance with item (iv) in the fourth paragraph of 4.16.

The Complainant claims that it offered the Respondent USD 2,000 for the disputed domain name when it became aware that the Respondent was listing it for sale in September 2018, that the Respondent counteroffered USD 7,500, which was “much more than what the domain should be sold for” and that it was highly likely that the Respondent significantly increased the price when it discovered that the Complainant was interested in the disputed domain name. As mentioned above, the Complainant invoked this counteroffer by the Respondent as evidence that the Respondent registered the disputed domain name in bad faith for the purpose of sale to the Complainant under paragraph 4(b)(i) of the Policy.

In those circumstances, it was incumbent on the Complainant to produce all relevant communications relating to the counteroffer; but it did not do so. The emails included in the factual summary in section 4 above only came to the attention of the Panel at the behest of the Respondent.

Even these emails do not appear to tell the full story, as they include no reference to the initial USD 2,000 offer mentioned by the Complainant. The Panel therefore deduces that this initial offer was made through the Respondent’s website and that, perhaps having received no or an unsatisfactory response, the decision was taken to follow up with the enquiry email of September 11, 2011. Crucially, this email was sent in the name of CSC. It made no mention of the Complainant and indeed gave no indication that CSC was acting for a client rather than on its own behalf (“We are interested in purchasing…”). Thereafter, the Respondent’s broker responded with the counteroffer of USD 7,500.

Accordingly, the communications appear to contradict the Complainant’s version of events and to confirm the Respondent’s assertion that the Complainant never revealed itself in the course of the purchase enquiries. In these circumstances, it is difficult to see how the Complainant can persuasively claim not only that the counteroffer indicated that the Respondent registered the disputed domain name for the purpose of sale to the Complainant but that the Respondent specifically increased its asking price to USD 7,500 when it allegedly discovered that the Complainant was interested in the disputed domain name.

Celgene is a biopharma company that is being acquired by Bristol-Meyers Squibb.

Cozen O’Connor represented Celgene. ESQwire.com represented the domain name owner.

CEAT tire company fabricated evidence, panel determines

by — Policy & Law 4 Comments

Panel says that tire company submitted “clearly fabricated” evidence.

The only way to get ads for tires on this page is to enter a tire search term.

Indian tire company CEAT (short for Cavi Elettrici e Affini Torino) has been found to have engaged in reverse domain name hijacking over the domain name CEATE.com.

The company owns the domain CEAT.com, which it won in a 2011 UDRP filing. There was one dissenting panelist in that case, Neil Anthony Brown. Brown was one of the panelists in the case for CEATE.com as well.

According to the World Intellectual Property Organization decision, CEAT manufactured evidence suggesting that the parked domain at CEATE.com showed ads for tires. It did this by entering “ceat tyre company” in the search box on the parked domain.

The three-person panel found that “Complainant’s screenshots showing use the disputed domain name in connection with the Complainant’s trademark submitted as Annex 2 to the Complaint have been clearly fabricated in an attempt to create evidence of the Respondent’s bad faith.”

It found that CEAT engaged in reverse domain name hijacking.

CEAT was represented by DePenning & DePenning, which has represented a client in a reverse domain name hijacking case before. The domain owner was represented by Zak Muscovitch.

Company tries to hijack PlugandPlay.com domain name

by — Policy & Law 4 Comments

Venture capital and accelerator company tries to get PlugAndPlay.com through cybersquatting dispute.

VC tried to get PlugandPlay.com domain.

A California company has been found to have attempted reverse domain name hijacking of the domain name PlugAndPlay.com.

Plug & Play, LLC, a California venture capital firm that runs 50 accelerators around the world, tried to get the domain name PlugAndPlay.com from its rightful owner by claiming he was cybersquatting. The Complainant uses the domain name PlugandPlayTechCenter.com.

The case was going to be difficult to win even without looking at the details: “plug and play” is a common technology term that has been used extensively in marketing.

But it’s the details that led to World Intellectual Property Organization panelist W. Scott Blackmer determining that Plug & Play, LLC filed the case in abuse of the policy. The key issue is that the Complainant didn’t even exist when the domain owner registered the domain name. This means it was impossible for the domain owner to register the domain in bad faith to target the Complainant.

Blackmer wrote:

A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). That is the case here, where the Domain Name, based on a common English phrase, was created before the Complainant business was even formed, and the Respondent already had its own established business with a corresponding name. The Complainant failed to investigate these obvious difficulties, and its Supplemental Filing then overlooked facts (prominently, the relationships between the successive Domain Name registrants) that were available even in the Response and its attachments. Hence, the Panel grants the request for a finding of Reverse Domain Name Hijacking.

The domain owner also alleged that Plug & Play tried to mislead the panel by omitting emails showing that the Complainant initiated discussions about buying the domain name, rather than the other way around. It appears that the domain owner offered to sell the domain for $100,000-$150,000, which seems like a very fair price for this domain.

BTSA.com: Cybersquatting or RDNH? You decide.

by — Policy & Law 6 Comments

WIPO panelist makes a questionable decision.

World Intellectual Property Organization panelist Warwick A. Rothnie has determined that the owner of BTSA.com is cybersquatting and that the domain should be transferred to BTSA Biotecnologias Aplicadas, S.L.

Rothnie’s decision is surprising. You can make a good argument that this was actually a case of attempted reverse domain name hijacking.

It’s a bit convoluted because the domain name is financed by Domain Capital. Rothnie decided that the financing company is the true owner of the domain, which it financed in 2014. But the fact is that the beneficial owner registered the domain in 2003.

Although the Complainant says it existed prior to that, it didn’t register a domain for its website until 2004.

The Complainant has a registered trademark for BTSA BIOTECNOLOGÍAS APLICADAS as a figurative mark. Rothnie found this confusingly similar to the BTSA.com domain name.

What’s quite clear from reading the decision is that the beneficial owner of the domain acquired the domain for its value as a four letter domain, and that is how Domain Capital likely financed it. The decision says the domain was parked but did not show ads related to the Complainant.

That’s not cybersquatting.

The Complainant says it first discovered the use of BTSA.com when it decided to set up a subsidiary in the United States. It tried to acquire the domain and that failed. It then filed the UDRP.

I’d make an argument that this is a case of Plan B reverse domain name hijacking, not cybersquatting.

If nothing else, it’s not a clear case of cybersquatting and I believe Rothnie made the wrong decision.