Company admonished by WIPO panel for cybersquatting filing.

A Netherlands company that uses the domain 123inkt.nl to sell ink products has been found guilty of reverse domain name hijacking over the domain 123ink.com. Inkt is Dutch for ink.

Digital Revolution B.V. filed the dispute with World Intellectual Property Organization.

John Berryhill, defending 123Ink.com, noted that “123” is a common prefix for domain names. It also seemed that, while 123inkt.nl might have been in existence before the Respondent acquired 123ink.com, there weren’t proven trademark rights in the term at that time. 123Inkt.nl also focuses on the Netherlands and Belgium for its business, not the United States where the Respondent is based.

In finding reverse domain name hijacking, the three-person panel wrote:

In this case the Complainant’s registered trade mark rights were granted after the Respondent’s acquisition of the disputed domain name. There is no evidence before the Panel that would support a finding that by that date the Complainant had enjoyed such a substantial reputation as a result of the use of its unregistered 123INKT mark or domain name, that the Complainant enjoyed protectable unregistered rights in its mark. As discussed above, there is also nothing to suggest that either before 2009 or since that time, that the reputation attaching to the Complainant’s mark and to the disputed domain name extended beyond the Netherlands or Belgium to the United States where the Respondent is based. As a result, the Panel finds that it was impossible from the outset for the Complainant to show that the Respondent had registered the disputed domain name in bad faith as required under the third element of the Policy.

Panel says Celgene left important communications out of filing.

CellGene.com is one letter off from CelGene.com, but that doesn’t make it cybersquatting.

A three-person World Intellectual Property Organization panel has found Celgene Corporation (NASDAQ: CELG) engaged in reverse domain name hijacking over the domain name CellGene.com.

Through an intermediary, Celgene tried to buy the domain name in 2018, 15 years after the domain was registered. The domain owner responded with an asking price of $7,500.

The panel determined that Celgene did not prove that the domain owner lacked rights or legitimate interests in the domain name, nor was it registered in bad faith.

It found reverse domain name hijacking because it believes that Celgine tried to mislead it:

…In the Panel’s view, however, there is a more significant issue in the present case, which is that the Complainant has sought to mislead the Panel in accordance with item (iv) in the fourth paragraph of 4.16.

The Complainant claims that it offered the Respondent USD 2,000 for the disputed domain name when it became aware that the Respondent was listing it for sale in September 2018, that the Respondent counteroffered USD 7,500, which was “much more than what the domain should be sold for” and that it was highly likely that the Respondent significantly increased the price when it discovered that the Complainant was interested in the disputed domain name. As mentioned above, the Complainant invoked this counteroffer by the Respondent as evidence that the Respondent registered the disputed domain name in bad faith for the purpose of sale to the Complainant under paragraph 4(b)(i) of the Policy.

In those circumstances, it was incumbent on the Complainant to produce all relevant communications relating to the counteroffer; but it did not do so. The emails included in the factual summary in section 4 above only came to the attention of the Panel at the behest of the Respondent.

Even these emails do not appear to tell the full story, as they include no reference to the initial USD 2,000 offer mentioned by the Complainant. The Panel therefore deduces that this initial offer was made through the Respondent’s website and that, perhaps having received no or an unsatisfactory response, the decision was taken to follow up with the enquiry email of September 11, 2011. Crucially, this email was sent in the name of CSC. It made no mention of the Complainant and indeed gave no indication that CSC was acting for a client rather than on its own behalf (“We are interested in purchasing…”). Thereafter, the Respondent’s broker responded with the counteroffer of USD 7,500.

Accordingly, the communications appear to contradict the Complainant’s version of events and to confirm the Respondent’s assertion that the Complainant never revealed itself in the course of the purchase enquiries. In these circumstances, it is difficult to see how the Complainant can persuasively claim not only that the counteroffer indicated that the Respondent registered the disputed domain name for the purpose of sale to the Complainant but that the Respondent specifically increased its asking price to USD 7,500 when it allegedly discovered that the Complainant was interested in the disputed domain name.

Celgene is a biopharma company that is being acquired by Bristol-Meyers Squibb.

Cozen O’Connor represented Celgene. ESQwire.com represented the domain name owner.