Panelist finds the complaint was brought to harass a known competitor.

A World Intellectual Property Organization panelist has found Mighty Men Pty Ltd, trading as Opalshop, to have attempted reverse domain name hijacking for the domain OpalShop.com. The company uses the domain OpalShop.com.au.

OpalShop.com was technically registered to a dissolved company, but the owner of that company controls the domain.

Panelist John Swinson found that the Complainant didn’t show that the domain was confusingly similar to a trademark for which it had rights, and also that the domain was not registered and used in bad faith.

The Complainant failed to disclose prior communications with the Respondent, including an offer to buy the domain last year.

In finding reverse domain name hijacking, Swinson wrote:

It appears to the Panel that the Complainant has omitted material evidence from the Complaint. For example, according to the Response, the Complainant made an offer to buy the Disputed Domain Name from the Respondent in 2019. The Complaint is silent on this. The Complaint misrepresents the Chinese trade mark application as a word mark, and also did not make it clear to the Panel that the application had not proceeded to registration. The Complaint has also been drafted in a way that gives the impression that the Complainant does not know who is operating the website at the Disputed Domain Name, when (according to the Response) there have been various prior dealings between the Parties.

The Panel’s view is that the Complainant is seeking to use the UDRP to attempt to opportunistically obtain a domain name that has been legitimately used for over 20 years in connection with its ordinary meaning. The Complainant’s conduct verges on bad faith, appears to have been brought to harass a known competitor, and in the Panel’s view constitutes an abuse of the administrative proceeding.

Both parties represented themselves in the proceedings.

Shipping company files an abusive UDRP to try to get .com matching its .cl domain.

A Chilean shipping, transport and logistics company has been found to have tried reverse domain name hijacking the domain name GEN.com.

Agencias Universales S.A. filed a cybersquatting dispute with World Intellectual Property Organization to get the domain. The Complainant uses the domain name GEN.cl for its website; it is now known as “Grupo de Empresas Navieras,” meaning “group of shipping companies” in Spanish.

The domain owner registered the domain name for use in a now-defunct business called Global Education Network.

While the Complainant says it wasn’t aware of this when it filed the case, panelist Adam Taylor noted that the case still “failed by a large margin”.

He wrote:

The Complainant should have appreciated the level of evidence necessary to prove under the UDRP that the Respondent registered the disputed domain name in bad faith. The disputed domain name had a creation date of April 25, 1996, and even if acquired later, it is composed of three letters that could easily correspond to an acronym or to a dictionary word, and is currently passively held. The Complainant should have considered if there really existed any evidence to prove that the disputed domain name was registered with the Complainant’s trade mark in mind in order to take advantage of the Complainant’s trade mark with bad faith rather than for a legitimate purpose…

…As regards the Respondent’s plainly legitimate use of the disputed domain name, the Complainant says that it knew nothing of Jeff Williams or his alleged connection with the Company at the time of filing the Complaint. But even allowing for this, and even if it was reasonable for the Complainant not to have discovered the Company’s connection with the disputed domain name from the Wayback Machine, the Complainant still failed to put forward a stateable case for bad faith, let alone any relevant supporting evidence…

…Instead, the Complainant came up with a number of contrived arguments which fell far short of constituting bad faith, including an assertion that, of itself, use of the name “GEN” by the Complainant’s group with its alleged worldwide presence reinforced the Complainant’s right to own the disputed domain name with its “important” .com suffix…

The Complainant was represented by Sáenz de Santa María Abogados. The domain owner was represented by Pillsbury Winthrop Shaw Pittman LLP.

Panelist calls the complaint “patently deficient.”

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.