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Loco UDRP ends in reverse domain name hijacking

by — Policy & Law 2 Comments

Tech company tries to hijack domain name registered in 1999.

Reverse domain name hijacking graphic

A Brazilian technology company has been found guilty of reverse domain name hijacking in its effort to get the domain name InLoco.com. The Complainant, In Loco Tecnologia da Informação S.A., uses InLoco.com.br for its website.

The phrase “in loco” is a common Latin phrase meaning “in the place” or “in the right or proper spot”. (Loco also means “crazy” in Spanish, and loco is an apt description of this case.)

The owner of the domain name registered it in 1999, well before the Complainant was established in 2014. In Loco Tecnologia attempted to acquire the domain name from the registrant before filing the UDRP complaint.

After filing the complaint, In Loco Tenologia tried to withdraw it. But the domain name owner said he’d only consent to this if it was with prejudice, meaning that it couldn’t be filed again at a later date. He also wanted the panel to rule on reverse domain name hijacking.

The three-person World Intellectual Property Organization panel agreed with the domain name owner:

To allow a complainant to simply withdraw a complaint without prejudice after a response has been filed would allow for the possibility of a complainant refiling a complaint against the same respondent at a later point. Such “eleventh hour withdrawals” of complaints without prejudice invites the filing of potentially abusive complaints for strategic reasons.

It found that the Complainant had no chance of winning the case and attempted reverse domain name hijacking.

“Unicorn” Nubank is a reverse domain name hijacker

by — Policy & Law 0 Comments

Brazilian financial company filed dead-on-arrival cybersquatting complaint.

Reverse domain name hijacking graphic

Nubank, a Brazilian finance startup that has raised billions in funding, tried to reverse domain name hijack the domain name Nubank.com.

A World Intellectual Property Organization panelist made the ruling after Nubank (Nu Pagamentos S.A.) made a cybersquatting claim against the domain name. The owner of the domain name didn’t respond to the dispute, but it’s clear that the domain was registered well before Nubank had any trademark rights in the term.

It appears that Nubank filed the complaint after failing to get a response to its purchase overtures.

In finding reverse domain name hijacking, panelist Steven Maier wrote:

The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above, including in particular the fact that the disputed domain name had been registered many years before the Complainant began using the trademarks in question. Further, the Complainant’s admission that it has tried but failed to purchase the disputed domain name from the Respondent suggests to the Panel that this proceeding represents a fallback, in circumstances where the Complainant has failed to secure the disputed domain name by commercial negotiation. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

K&L Gates LLP represented Nubank.

Domain Capital gets reverse domain name hijacking win

by — Policy & Law 3 Comments

University in Spain filed dispute after it inquired about buying the domain name.

Reverse domain name hijacking graphic

Domain Capital has successfully defended its domain name UAX.com in a UDRP, and the Complainant was found guilty of reverse domain name hijacking.

Universidad Privada De Madrid, S.A., a University in Spain, filed the complaint after it first tried to buy the domain name. It wasn’t happy with the asking price, so it followed up with a cease & desist letter. Domain Capital’s attorneys responded to the letter explaining Domain Capital’s rights, but the university filed a cybersquatting complaint anyway.

The university failed to convince the panel that the three-letter domain was registered in bad faith. Instead, it appears that Domain Capital acquired the domain because of the value of short domain names.

In finding reverse domain name hijacking, the three-person World Intellectual Property Organization panel wrote:

When the Complainant’s failure to appreciate the weaknesses of its case, despite being placed on prior notice by the Respondent, is coupled to the fact that it only launched the Complaint after unsuccessfully attempting to acquire the disputed domain name at its own chosen price, the Panel accepts the Respondent’s submission that the Complaint was what is popularly known as a “Plan B case”, was brought in bad faith and constitutes an abuse of the administrative proceeding.

Domain Capital was represented by ESQwire.com. The university was represented by Legal Things Abogados.

Naturals.com loss is a “win” for Indian law firm

by — Policy & Law 3 Comments

Its client lost but the panelist didn’t find reverse domain name hijacking.

Screenshot for Naturals.in showing a woman sitting on a chair

A chain of beauty salons in India that uses the domain Naturals.in failed to get Naturals.COM through UDRP.

A UDRP for Naturals.com that was filed in October has been found in favor of the domain name registrant. The case was filed by an India-based chain of hair salons and training centers.

It will come as no surprise that the Complainant lost the case for this dictionary-word domain name. But the law firm that represented the Complainant might view it as a win, because it wasn’t found guilty of reverse domain name hijacking again.

The law firm DePenning & DePenning represented the beauty chain. It has been on the wrong end of at least three reverse domain name hijacking cases, including one last week.

This case could have gone that way. The domain owner registered the domain in 2001, and it seems that the beauty chain’s presence, at least online, started well after that. It didn’t register Naturals.in until much later.

The Complainant’s arguments seem rather flimsly and misguided:

Complainant further states that the use and existence of Domain Name will cause damage to Complainant’s business and reputation, and to customers and the general public. Any misrepresentation caused on account of the Domain Name would result in confusion and deception in the minds of customers. In this regard, domain names are emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions will soon be carried out only through Internet addresses rather than street addresses, post boxes or faxes. Complainant states that it will not be able to effectively pursue its business plans on the Internet unless the registration of the Domain Name is held by Complainant. Complainant states it is the legitimate owner of the domain names naturals.in and naturals.lk, through which it undertakes business and promotional activities. In view of the Domain Name’s registration, Complainant stands to lose financially and faces the imminent risk of dilution of brand value associated with the mark NATURALS.

Apparently, this concern didn’t develop until just last year.

World Intellectual Property Organization panelist Christopher Gibson gave the Complainant a pass on reverse domain name hijacking:

Panels have found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. In this case, the Panel finds that Complainant satisfied two of the three elements under the Policy. Complainant seems to have been convinced that, while it has trademark rights in its NATURALS mark, Respondent was only using the Domain Name for the purpose of offering it for sale to Complainant at an amount clearly in excess of Respondent’s out-of-pocket costs. The file does not show that Complainant knew or should have clearly known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint and before receiving Respondent’s Response.

I disagree. I think with a bit of due diligence, the Complainant would have known that this case was doomed to fail. The domain was clearly not registered in bad faith.

Spanish company tried reverse domain name hijacking

by — Policy & Law 5 Comments

Attorney tried to intimidate domain name owner to settle dispute.

Reverse domain name hijacking graphic

Decoweb Brands, S.A. of Spain has been found to have engaged in reverse domain name hijacking over the domain name MaisonDecor.com.

It certainly seems like Decoweb’s counsel tried to bully the domain owner into handing the domain over. According to the World Intellectual Property Organization decision:

Prior to the filing of the Complaint, the Complainant’s legal representative contacted the Respondent, in English, seeking information about a possible sale of the disputed domain name. On July 22, 2019, the Respondent offered a price of USD 8,500 and, later the same day, USD 7,000. The Complainant’s legal representative made a counter-offer of USD 500 that the Respondent rejected. On October 17, 2019, after the filing of the Complaint, the Complainant’s legal representative sent an email to the Respondent making a further counter-offer of USD 300 for the transfer of the disputed domain name and settlement of this dispute. In that email, the Complainant’s legal representative alleged that if this counter-offer was rejected and the Panel ordered transfer of the disputed domain name, the Complainant could probably also initiate proceedings for indemnity and procedural costs against the Respondent.

That’s not good.

Decoweb didn’t provide proof of use of the Maison Decor trademark, despite it having acquired a Spanish trademark that was registered in 1994 by another party. Without proof, it was hard to convince the panelist that the Chinese registrant targeted it with the registration.

That said, it appears that the domain owner either mislead panelist Matthew Kennedy or Kennedy read too much into the response. Kennedy believed the domain owner was the original registrant in 1998. Historical Whois records show that the domain expired in 2010 and was registered by a party in China.

It doesn’t seem like this would have changed the overall decision, though. The respondent showed that Decoweb was founded in 2015. Without showing that it acquired actively used trademarks prior to 2010, it wouldn’t have mattered. Even then, with two generic words, it would have been an uphill battle to win this case.

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