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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.

CBD company pays $160,000 for GreenRoads.com after losing UDRP

by — Domain Sales 13 Comments

Florida company buys domain that it tried to get through UDRP.

Picture of kid with sunglasses and suspenders sitting in black chair holding money

Green Roads of Florida, LLC has purchased the domain name GreenRoads.com for $160,000 after failing to win it in a cybersquatting dispute.

The CBD company filed a UDRP with World Intellectual Property Organization in October, 2018. In January, the three-person panel found in favor of the domain owner. One of the panelists found reverse domain name hijacking.

Green Roads had tried to withdraw the case after getting the complaint response from domain attorney John Berryhill, but the domain owner refused to allow this.

Now, nearly a year later, Green Roads has ponied up for the domain.

I wonder if it paid more for the domain than if it had taken the high* road to begin with?

*That’s high as in proper, not drugs.

Walmart’s Vudu is a reverse domain name hijacker

by — Policy & Law 5 Comments

Vudo.com was registered well before the streaming video company existed.

A screenshot of Vudu.com showing Good Boys video

Vudu filed a cybersquatting complaint against Vudo.com. It was found guilty of reverse domain name hijacking.

Vudu, a streaming video subsidiary of retail giant Walmart, has been found to have attempted reverse domain name hijacking over the domain name Vudo.com.

The company filed a cybersquatting complaint against the domain name owner, even thought the owner registered the domain name well before Vudu was founded. A key requirement of the Uniform Domain Name Dispute Resolution Policy (UDRP) is that the Complainant’s trademark rights must predate the domain owner’s registration. After all, if he registered the domain before the Complainant had trademark rights, then it’s hard to prove that he registered the domain to target a non-existent brand.

In finding reverse domain name hijacking, a World Intellectual Property Organization panel wrote:

The Complainant entirely sidesteps the glaring deficiency in its case on the second and third elements of the Complaint. The Domain Name is a homophone of a dictionary word, and it was registered long before the Complainant or its trademark existed. The Complaint repeatedly emphasizes the registration of the Complainant’s domain name in 1995 to suggest that the Complainant has senior rights, without disclosing that this registration was by an unrelated party. The Complainant evidently acquired that domain name in 2007 and began using VUDU as a mark in September 2007, as it claimed in its applications to the United States Patent and Trademark Office. The Complaint insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name. Even without glancing at the WIPO Overview 3.0, counsel for the Complainant should have recognized from the plain language of the Policy that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.

Vudu was represented by Drinker, Biddle & Reath, LLP. The domain owner was self-represented.

Trivago argument falls way short in cybersquatting complaint

by — Policy & Law 5 Comments

Would you confuse Traveltrow with Trivago?

Logo for travel site TrivagoTravel company Trivago (NASDAQ: TRVG) has lost a cybersquatting case in which the panelist said it was “not really a close call.”

Trivago filed the complaint against the owner of Traveltrow.com, arguing that Traveltrow was confusingly similar to Trivago.

That’s not a typo: Trivago vs. Traveltrow.

Here’s how Trivago tried to convince the World Intellectual Property Organization panelist:

Complainant argues, first and foremost, that the TRIVAGO mark and the Domain Name both have three syllables (one disregards the “.com” generic Top-Level Domain). Complainant then notes that the last syllable of the Domain Name (“trow”), rhymes with the last syllable of the mark (“go”). Complainant notes that the first syllable of the mark and the Domain Name begins with the letters “tr,” and that the second syllable of both begins with the letter “v.”

Panelist Robert Badgley wasn’t buying it.

It appears that the owner of Traveltrow.com might be infringing on Trivago’s trademark rights with content hosted at the domain name. But Badgley notes that is beyond the scope of UDRP:

It may well be that Complainant has a valid trademark infringement or unfair competition cause of action against Respondent in a court of law. The UDRP, however, is focused on abusive domain name registration and use, not more generally with infringing conduct across the Internet. As such, if a domain name is not confusingly similar to the complainant’s trademark, the case is over, regardless of whether the respondent is a bad actor.