Domain Name Wire | Domain Name News

Domain Name Industry News

Featured Domains

Instant Domain Search

Seattle business guilty of reverse domain name hijacking

by — Policy & Law 1 Comment

Panelist calls the complaint “patently deficient.”

Picture of masked man with the words reverse domain name hijacking

UDRP panelists usually don’t find reverse domain name hijacking if a Complainant represents themselves. But World Intellectual Property Organization panelist Scott Blackmer decided it was warranted in a recent case.

Structure Cellars, which operates a wine tasting room in Seattle, filed a complaint against HouseofPagne.com (short for Champagne).

The registrant of the domain says she registered it and pitched the Complainant on an idea for a business. The two didn’t end up partnering on the venture. There’s a bit of he said, she said and there might be a legitimate dispute outside of the scope of UDRP.

But that dispute doesn’t warrant a cybersquatting dispute.

Blackmer noted that, even without counsel, the Complainant should have realized it was filing a bad case:

Here, the Complaint is patently deficient. The Complainant has trademark applications, not registrations, and it would need proof to establish common law rights. The Complaint does not address the obvious problem that the Complainant’s business was launched months after the Respondent registered the Domain Name. It should have been clear that if (sic) would be necessary to establish the relationship between the parties, but no evidence was submitted on this point. The Complainant is not represented by legal counsel, but these are common-sense rather than highly technical issues, and the Center’s forms, Rules, and Overview provide accessible guidance on these points. The Respondent, who is also not represented by counsel, certainly grasped their implication when completing the Center’s form Response…

…The Complainant may have a business dispute with the Respondent, but the Complainant should not have pursued a remedy designed only to protect trademark rights when it was not prepared to prove that it has such rights and that the Respondent registered and used the Domain Name in contemplation of the Complainant’s trademark rights. This is so fundamental to the Policy that it must be considered irresponsible to ignore.

Wine spat: Brewery and vineyard tries reverse hijacking SpringGate.com

by — Policy & Law 3 Comments

Pennslyvania brewery files bad case with WIPO.

Picture of masked man with the words reverse domain name hijacking

A Pennslyvania brewery and winery has been found guilty of reverse domain name hijacking in a dispute over SpringGate.com.

Schoffstall Farm, LLC, which does business as Spring Gate Vineyard, Winery and Brewery, attempted to get the domain name in a cybersquatting dispute at the World Intellectual Property Organization.

The company has traded as Spring Gate since 2014. But the domain’s owner, Ashantiplc Limited, registered the domain name in 2006. Therefore, it could not have registered the domain name in bad faith to target the non-existent brand.

Before filing the UDRP, the Complainant sent a demand letter to Ashanti. Domain attorney John Berryhill responded to the demand letter and noted that his client registered the domain before Schoffstall Farm had any trademark rights in the term. He also requested that the Schoffstall Farm include his response in any UDRP filing.

But the Complainant didn’t include this response. Instead, it argued in the UDRP that the domain was acquired in 2018. While it’s not clear why it chose this date, this is when the registrar Fabulous (where the domain is registered) changed its accredited name to Sea Wasp.

The Complainant also argued “retroactive bad faith”.

In finding reverse domain name hijacking, the panel 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. The Complainant produced no material evidence that the Respondent acquired the disputed domain name in 2018 and gave no reasonable explanation for its assertion to that effect. The Panel is particularly perturbed by the Complainant’s failure to exhibit the Respondent’s email dated November 28, 2019, stating that it had acquired the disputed domain name in 2006, having exhibited its own letter of the previous date and having been expressly requested by the Respondent to include its reply. The Panel is also of the view that the Complainant’s purported reliance on the Octogen line of cases implies its clear awareness that its case was fundamentally flawed.

Tucker Arensberg, P.C. represented the Complainant in the reverse domain name hijacking. John Berryhill represented the Respondent.

 

Doxing crosses the free speech line in UDRP case

by — Policy & Law 0 Comments

Panelist rules that domain used for gripe site isn’t protected speech.

A yellow-orange background with the word 'doxing' on it

UDRP panelists walk a fine line when considering cases involving gripe sites. Is it cybersquatting to register a domain related to a company if the goal is to complain about the company, or is it just exercising free speech?

Panelists tend to give deference to freedom of speech considerations when both parties are in the United States. But a recent case at the World Intellectual Property Organization involving a car dealer shows that the line can be crossed.

The case for TedBritt .net involved a car dealer in Virginia and a man in Maine who claimed that the dealership had been cheating customers.

Panelist W. Scott Blackmer noted that, while the Respondent was free to complain about the car dealer using a website, his approach violated the UDRP.

His decision notes that the Respondent appears to have copied much of the Complainant’s website:

The entire point seems to be to mislead Internet users so they will visit the website and then remain long enough to be exposed to the disparaging content.

Blackmer also pointed out that the Respondent published personal information about the Complainant’s family members and encouraged people to “e-mail them, call them, Face Book them, or visit them at their homes.” He cited doxing as evidence of bad faith:

…the Respondent employed similar tactics here in researching and revealing personal information on the website associated with the Domain Name, including personal information about family members, apparently because of dissatisfaction about a business transaction. This is a dangerous and indefensible practice; in some instances it can be actionable (as was evidently the case in Symetra Life Insurance v. Emerson, supra) or result in criminal prosecution (see, e.g., Wikipedia, “Doxing”). Doxing can be added to the illustrations of bad faith.

Hyland Law PLLC represented the Complainant.

A berry well reasoned cybersquatting case

by — Policy & Law 2 Comments

Decision explains that domain registrant must have targeted the Complainant to win a case.

Picture of a bowl of blackberries with the words "A berry well reasoned UDRP"

A three-person World Intellectual Property Organization panel has found against blackberry producer Berry Fresh, LLC, in a cybersquatting dispute it filed against BerrySweet.com. The panel wrote a detailed decision showing that, just because you have a trademark for a term, it doesn’t mean a domain registrant bought the domain to target your mark.

Berry Fresh has a Canadian trademark for Berry Fresh and a U.S. registration on the Supplemental Register. Even putting aside the fact that the U.S. registration is on the Supplemental Register, it’s noteworthy that the trademarks are for blackberries. Just blackberries.

If you Google the term Berry Fresh, you’ll get results for Pokemon, stationary, Ben & Jerry’s ice cream, and other things that use “berry sweet” as a play on “very sweet.”

In this case, Berry Fresh couldn’t show that the registrant of the domain name was targeting it with the registration. He wasn’t using the domain.

Was he targeting the berry producer? Or did he just register the domain because it’s a fun play on “very sweet”? It’s very likely the latter.

Berry Fresh has a trademark for berries. Not the many other uses of this term.

It’s also worth pointing out that Berry Fresh was the prior registrant of this domain. It let the domain expire by accident last year. Still, the current registrant didn’t do anything to show that it targeted the produce company with the domain registration. He didn’t offer to sell it to Berry Fresh until Berry Fresh contacted him. He didn’t put up ads related to berries.

This case should serve as a reminder to all Complainants that just showing they have a trademark isn’t enough to win a UDRP. They need to show that the domain registrant targeted them with the registration.

Gameloft recovers Asphalt 9 domain names

by — Policy & Law 0 Comments

Company wins cybersquatting cases.

Gameloft, a popular mobile gaming company, has recovered two domain names related to the latest game in its Asphalt racing video game series.

The company won cybersquatting cases against the owners of asphalt9legend(.)com and asphalt9legends(.)net.

Neither of the domains resolved for me this morning, but Gameloft stated that they were previously used maliciously.

It said that the first domain “was used to deceive Internet users presumably looking for Complainant’s game, inducing them to download malicious software and redirecting them to the website of a competitor of Complainant.” That domain points to AWS nameservers.

The second domain resolved to a website offering coloring pages about various random subjects and referring to “Asphalt 9 Legends”.

Barring an unlikely lawsuit brought by one of the two domain registrants, the two domains should be transferred to Gameloft in about ten days.

Gameloft filed the cases with the World Intellectual Property Organization.



Domain Wheel

Do NOT follow this link or you will be banned from the site!