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This UDRP troubles me

by — Policy & Law 10 Comments

I struggle to see how this qualifies as cybersquatting under UDRP.

Blue image with the letters UDRP

A beauty products company in France called Robertet SA has won a UDRP against a man in Texas who registered the domain name Robertets.com. The case troubles me.

The man who registered the domain is Robert Emshoff. Right away, that should set off alarm bells that this person probably registered the domain because of his name.

But he didn’t respond to the UDRP. (I’ve reached out to him to ask why. I talk to domain owners who tell me they didn’t receive the notice, didn’t understand what it was, didn’t have the time to respond, or decided it wasn’t worth hiring a lawyer to figure it out.)

Understandably, UDRP panelists defer to a Complainant’s accusations when there’s no response. But I still question the decision in this case.

On the issue of Rights or Legitimate Interests in the domain, panelist Mihaela Maravela wrote:

…Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The Panel notes that the Respondent’s first name appears to be Robert, but the Respondent failed to respond and to provide any evidence that might support a finding that he was commonly known by the disputed domain name at the registration date. See section 2.3 of the WIPO Overview 3.0.

By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

I can think of many reasons there is likely a legitimate interest. A domain that starts with the registrant’s first name and the first initial of the last name is a good sign of a legitimate interest. Maybe he registered it for a family website. The person appears to be an accountant, so maybe it’s for future use as Robert E Tax Services.

I don’t know for sure, and I realize the panelist can’t know for sure, either. But without further evidence of bad faith, doesn’t it strain credulity that this person in Texas is trying to cybersquat on a company in France that makes raw materials for beauty products?

It gets more complicated because the domain hasn’t been put to use, at least for a website. So how did Robertet SA show “bad faith” for this domain registered last year that’s really similar to the registrant’s name?

Here’s what Maravela writes about finding bad faith:

The Panel takes into account, in particular the fact that the Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, having failed to respond to the Complaint, the Respondent’s use of a privacy service, and the distinctiveness of the Complainant’s trademark. Moreover, given that the Respondent has registered the disputed domain name with a misspelling of the Complainant’s trademarks (“typosquatting”), an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred.

Let’s break this down.

  1. Didn’t respond to the complaint. This is definitely a strike against the domain owner.
  2. Used a whois privacy service. Oh, c’mon! UDRP panelists are still mentioning this? When this domain was registered last year, GoDaddy had already started redacting Whois information. But they still try to scare customers into paying more for a privacy service on security grounds. Either way, this is a bad reason to find bad faith in a UDRP filed in 2021.
  3. The distinctiveness of Complainant’s trademarks. Eh, maybe if you’re in the beauty products business. Not some guy in Texas.
  4. It’s typosquatting. I struggle to figure out who this domain is considered typosquatting.
  5. An intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. Can someone show me how the domain owner is gaining commercially by owning this domain?

Note that the Complainant didn’t show that the domain owner used the domain for pay-per-click parking, or that he has a history of cybersquatting.

At the end of the day, a panelist should ask if themself if it’s a clear-cut case of cybersquatting. Here you have someone who registered a domain that’s awfully similar to his name, pointed it to Microsoft’s servers, including setting up an MX record for email, and doesn’t appear to be using the domain in bad faith.  He registered it just six months before the UDRP was filed.

This doesn’t strike me as a clear-cut case of cybersquatting.

[Update: In the comments below, John Berryhill notes that this domain does indeed stand for Robert E Tax Services. So the UDRP process just took a legitimate domain name registration away from its owner.]

Wireless charging company tries reverse domain name hijacking

by — Policy & Law 0 Comments

Energysquare tries to upgrade its domain name by abusing the Uniform Domain Name Dispute Resolution Policy.

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

A French company that licenses wireless charging technology has been found to have tried reverse domain name hijacking the domain Energysquare.com.

Energysquare uses the domain name Energysquare.co, so it’s obvious why it wanted to upgrade.

The problem for the company is that the owner of the .com registered it before Energysquare existed, making it impossible that the domain owner registered the domain in bad faith to later sell the domain to the company.

World Intellectual Property Organization Panelist John Swinson found in the domain owner’s favor and determined that Energysquare was guilty of reverse domain name hijacking.

Swinson determined that Energysquare alluded to certain provisions of UDRP that were not relevant to the current case. He wrote:

The Complainant’s only ground for bad faith was that the Respondent is a “domainer” who owns almost 1,000 domain names and that the disputed domain name is not being used but is listed for sale. The Complaint appears to rely on paragraphs 4(b)(i) and (ii) of the Policy but does not explicitly cite those provisions.

Under paragraph 4(b)(i) of the Policy, it would be evidence of registration and use in bad faith if there are circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a large profit. As the Complainant did not exist when the Respondent registered the disputed domain name, this could not have been the Respondent’s primary intention at the time the Respondent registered the disputed domain name…

and:

Finally, the Complainant indirectly implies that the Respondent has engaged in a pattern of conduct of registering domain names for the purpose of reselling, as the Respondent owns many domain names, which are for sale. However, simply owning a number of domain names is not of itself evidence of bad faith. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademarks, and an abusive conduct based on to the similarity of such domain names with the third party trademarks. Here, there is no such evidence, nor that the domain names were registered by the Respondent to prevent existing third party trademark owners from the registration of the corresponding domain names.

Walter Billet Avocats represented Energysquare. The domain owner represented itself.

Here’s the third RDNH of the day

by — Policy & Law 4 Comments

World Intellectual Property Organization published three reverse domain name hijacking decisions today.

Black background with white numbers 1 2 and 3 with red x through them

When it rains, it pours, and today that means we have three reverse domain name hijacking (RDNH) cases to report.

Earlier today, I wrote about reverse domain name hijacking findings for Koibox.com and Machani.com.

The third case is for WWTM.org.

Maharishi Foundation USA, Inc is the guilty party in this case. It has a U.S. trademark for TM, which is short for its Transcendental Meditation technique. It uses the domain TM.org.

Working With The Mind, a community interest company in the UK, uses WWTM.org for its site. The organization helps people with mindfulness, including mindfulness programs for prisons and people impacted by COVID-19.

One of the Complainant’s arguments was that WWTM.org is a typo of WWW.TM.org, but the panelist didn’t buy that.

World Intellectual Property Organization panelist John Swinson took issue with how Maharishi Foundation USA, Inc presented its case.

In finding RDNH, called attention to this statement by Maharishi Foundation:

“Clearly, Respondent selected and used the Disputed Domain Name solely to attract consumers to its website by trading on the fame of the TM trademark; such use can not confer any proprietary rights in Complainant’s trademark to the Respondent.

Furthermore, nothing on the Respondent’s website suggests any proper use of the TM acronym or a good faith basis for adopting the WWTM name. Respondent does not state anywhere on his sites what TM, alone, or in combination with WWTM means.”

Swinson disagreed:

Based on the evidence presented in the Complaint, it is certainly not clear to the Panel that the Respondent selected the disputed domain name solely to trade on the fame of the TM trademark.

Further, it is clear to the Panel that, even on a cursory review of the Respondent’s website, the disputed name is an acronym for “Working With The Mind”. The Respondent’s website uses the name “Working With The Mind” in many places, including in the title. Prior to filing the Complainant, the Complainant and the Respondent communicated by email. The Respondent in this correspondence stated to the Complainant’s attorney: “You and the Foundation you represent can read more about WWTM on our website at wwtm.org.” The Complainant had no reasonable basis to assert in the Complaint that nothing on the Respondent’s website suggests any proper use for adopting the WWTM name.

The Complainant was legally represented. The Complainant promotes techniques to improve calmness, clarity of mind and happiness. The Respondent is a small social enterprise with limited funds and is self-represented, and it is reasonable for the Panel to conclude that the Complainant was aware of this before filing the Complainant.

Shuttleworth & Ingersoll P.L.C. represented the Complainant. The Respondent represented himself.

Indian firm tries reverse domain hijacking a common surname

by — Policy & Law 3 Comments

Company didn’t withdraw complaint after it was apparent the domain was owned by someone with the surname of the domain.

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

A World Intellectual Property Organization panelist has found Machani Infra Development Corporation Private Limited to have engaged in reverse domain name hijacking.

The company filed a UDRP complaint against Machani.com and failed to convince the panel of any of the three prongs required to win a cybersquatting dispute.

Most damning was that the domain name owner’s last name is Machani. While it’s plausible that the Complainant didn’t know this when it filed its dispute, it didn’t withdraw the case after finding out this information. Instead, it doubled down by trying to submit a supplemental filing that did not dispute the evidence about the family name of the Respondent but started with the statement that “The Respondent has not disputed or denied any of the submissions and contentions made in the complaint and is, therefore, deemed to have accepted the submissions and contentions made in the complaint”.

The panelist also found that the Complainant made inflated claims about trademark rights in the term Machani. In any event, the supporting evidence it submitted to purported common law rights post-dated the domain registration.

IndusLaw represented the Complainant, and Ankur Raheja of Cylaw Solutions represented the domain owner. This is the second reverse domain name hijacking finding Cylaw has won that was published today.

Reboxed Limited attempts reverse domain name hijacking

by — Policy & Law 0 Comments

UK mobile phone site went after domain registered before it existed.

A picture of a man's face with an eye cover coming out of a laptop screen with the words "reverse domain name hijacking"

A UK firm has been found (pdf) to have attempted to reverse domain name hijack the domain name reboxed.com.

Reboxed Limited offers a marketplace for buying and selling used mobile phones at Reboxed.co. Before founding the company in 2019, Reboxed’s founders attempted to buy Reboxed.com from the current owner, who acquired the domain name in 2012. Given the timeline, a cybersquatting dispute under UDRP was doomed to fail.

Nevertheless, Reboxed filed a UDRP with the assistance of the law firm Sheridans.

The panel found that Reboxed did not show that the domain was registered and used in bad faith because Respondent could not have known that a firm would pop up many years later to use the mark.

It also found reverse domain name hijacking. This is the second reverse domain name hijacking win for attorney John Berryhill in two days. The three-person World Intellectual Property Organization panel wrote:

…The Complainant in this case is legally represented and, in view particularly of that factor, the Panel considers that the Complainant knew or ought to have known that the Complaint had no reasonable prospect of success.  The Panel agrees with the Respondent’s contention that this is a “Plan B case”, in which the Complainant, having failed to purchase the disputed domain name by means of a commercial negotiation, has turned to the UDRP in an improper attempt to deprive the Respondent of it…

The dispute appears to have gotten a bit testy. The Complainant’s lawyer was apparently offended by Berryhill’s response on the case, calling it “unprofessional” and defamatory to the lawyer and its client. Berryhill wrote about it on twitter.

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