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Soft Trust Inc. tries to reverse domain name hijack eCourier.com

by — Policy & Law 0 Comments

Domain name was registered well before the Complainant was incorporated.

Reverse domain name hijacking graphic

The Canadian operator of a secure file transfer service called e-Courier has been found to have engaged in reverse domain name hijacking for the domain name eCourier.com. The company uses e-Courier.ca for its website.

Soft Trust Inc. filed a cybersquatting complaint against the domain name with World Intellectual Property Organization (WIPO). Soft Trust was incorporated in 2004 and its E-Courier rights would have postdated that. The domain name was registered in 1997.

The Complainant made several seemingly conflicting statements about when it believed the Respondent acquired the domain name. These are quotes WIPO panelist John Swinson included in his decision that represent Soft Trust’s arguments:

“The website at the Disputed Domain Name has displayed a message stating “Sorry! This site is temporarily unavailable.” since at least September 2001”

“The Complainant is unsure of the exact date that the Respondent registered the Disputed Domain Name but it appears to have been at some point between September 14, 2005, and December 17, 2015. This is after the date on which the Complainant accrued rights in E-COURIER.”

“It appears the Disputed Domain Name was originally registered by a third party and that the Respondent did not register the Disputed Domain Name until 2012 at the earliest.”

Swinson clarified the Complainant’s position:

“The Complainant contends that the Disputed Domain Name was transferred from the Respondent individual (Todd Hinton) to the Respondent company (Ikebana America LLC) at some point between September 14, 2005, and December 17, 2015, and that this constitutes a new registration of the Disputed Domain Name.”

But it is clear that Hinton and the company are essentially one and the same. This means that the Respondent registered the domain in 1997, well before the Complainant was in business.

In finding reverse domain name hijacking Swinson listed eight facts that easily showed that Hinton and Ikebana were one and the same and that the Complainant should have known this.

It also turns out that a representative of the Complainant contacted the Respondent on three occasions between 2007 and 2011, offering to buy the domain. The Respondent declined each time. The complainant didn’t include this correspondence in its complaint.

Merizzi Ramsbottom & Forster represented the Complainant. The decision does not list counsel for the Respondent.

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.

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.

NASDAQ 100 company Vertex Pharmaceuticals tries reverse domain name hijacking

by — Policy & Law 2 Comments

Company tried to get domain name from a Pakistani medical company.

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

A World Intellectual Property Organization panelist has found that Vertex Pharmaceuticals, Inc. (NASDAQ:VRTX), a $58 billion (market cap) company, tried to reverse domain name hijack the domain VertexMedical.com.

The domain name is owned by a Pakistan healthcare company called Vertex Medical (pvt) Ltd. A quick look at its website shows that it’s an operating business. And a simple Google search pulls up a Dun & Bradstreet record showing that the company has about 100 employees and over $6 million in revenue.

Just knowing this information would make it foolish to file a UDRP against the domain name. While there could be a trademark issue between the companies, this is certainly not a case of cybersquatting that the UDRP was created for.

But Vertex Pharmaceuticals filed a cybersquatting complaint anyway.

Panelist Andrew Lothian unsurprisingly determined that Vertex Pharmaceuticals did not show that the domain was registered and used in bad faith, nor that Vertex Medical lacked rights or legitimate interests in the domain.

In finding reverse domain name hijacking, Lothian was particularly disturbed that Vertex Pharmaceuticals argued that there’s no reason another medical company would select the term Vertex for its business. Vertex is the medical term for the top of the head. Lothian wrote:

The nature of the incorrect and misleading submission regarding the use of “vertex” in a medical context coupled with an apparent failure to investigate the Respondent and a failure to put forward documentary evidence which was relied upon in submissions is all the more concerning given that the Complainant is represented by counsel.

Vertex Pharmaceuticals has won 7 previous UDRP cases, so it’s no stranger to the policy. This makes it all the more surprising that it filed this case. Perhaps it thought this would be an easier way to try to get the domain than filing a lawsuit against a company in Pakistan.

The Complainant was represented by Sunstein LLP, a Boston intellectual property law firm. The Respondent was represented by Cylaw Solutions in India.

 

Reverse domain name hijacking in GreenGlobe.com dispute

by — Policy & Law 0 Comments

Complainant didn’t disclose licensing relationship with domain name owner.

Picture of masked man with the words reverse domain name hijacking

A World Intellectual Property Organization panelist has found that Green Globe Limited engaged in reverse domain name hijacking in a dispute it brought against the domain name GreenGlobe.com.

The domain name owner entered into a licensing agreement with Green Globe Limited to use the Green Globe marks. Despite this, Green Globe Limited stated in its complaint that the Respondent was not a licensee of the Complainant’s trademarks.

That’s boilerplate language in many complaints. But in this case, it was inaccurate.

Panelist Adam Taylor wrote:

…in the amended version of its Complaint, the Complainant proceeded as if the disputed domain name was being operated by an entirely independent entity that had allegedly registered and used the disputed domain name to illicitly target the Complainant’s rights. Indeed, on the face of it and without the context of the Licence, the Respondent’s conduct seemed particularly egregious as the website included a reproduction of the Complainant’s logo. If the Respondent had not filed a Response, the Panel would be considering a very different case. The Response has proved essential in revealing the real nature of this dispute.

SoCal IP Law Group LLP represented the Complainant. The Law Office of Catherine Anne Allen represented the Respondent.

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