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NASDAQ 100 company Vertex Pharmaceuticals tries reverse domain name hijacking

by — Policy & Law 2 Comments

Company tried to get domain name from a Pakistani medical company.

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

A World Intellectual Property Organization panelist has found that Vertex Pharmaceuticals, Inc. (NASDAQ:VRTX), a $58 billion (market cap) company, tried to reverse domain name hijack the domain VertexMedical.com.

The domain name is owned by a Pakistan healthcare company called Vertex Medical (pvt) Ltd. A quick look at its website shows that it’s an operating business. And a simple Google search pulls up a Dun & Bradstreet record showing that the company has about 100 employees and over $6 million in revenue.

Just knowing this information would make it foolish to file a UDRP against the domain name. While there could be a trademark issue between the companies, this is certainly not a case of cybersquatting that the UDRP was created for.

But Vertex Pharmaceuticals filed a cybersquatting complaint anyway.

Panelist Andrew Lothian unsurprisingly determined that Vertex Pharmaceuticals did not show that the domain was registered and used in bad faith, nor that Vertex Medical lacked rights or legitimate interests in the domain.

In finding reverse domain name hijacking, Lothian was particularly disturbed that Vertex Pharmaceuticals argued that there’s no reason another medical company would select the term Vertex for its business. Vertex is the medical term for the top of the head. Lothian wrote:

The nature of the incorrect and misleading submission regarding the use of “vertex” in a medical context coupled with an apparent failure to investigate the Respondent and a failure to put forward documentary evidence which was relied upon in submissions is all the more concerning given that the Complainant is represented by counsel.

Vertex Pharmaceuticals has won 7 previous UDRP cases, so it’s no stranger to the policy. This makes it all the more surprising that it filed this case. Perhaps it thought this would be an easier way to try to get the domain than filing a lawsuit against a company in Pakistan.

The Complainant was represented by Sunstein LLP, a Boston intellectual property law firm. The Respondent was represented by Cylaw Solutions in India.

 

Reverse domain name hijacking in GreenGlobe.com dispute

by — Policy & Law 0 Comments

Complainant didn’t disclose licensing relationship with domain name owner.

Picture of masked man with the words reverse domain name hijacking

A World Intellectual Property Organization panelist has found that Green Globe Limited engaged in reverse domain name hijacking in a dispute it brought against the domain name GreenGlobe.com.

The domain name owner entered into a licensing agreement with Green Globe Limited to use the Green Globe marks. Despite this, Green Globe Limited stated in its complaint that the Respondent was not a licensee of the Complainant’s trademarks.

That’s boilerplate language in many complaints. But in this case, it was inaccurate.

Panelist Adam Taylor wrote:

…in the amended version of its Complaint, the Complainant proceeded as if the disputed domain name was being operated by an entirely independent entity that had allegedly registered and used the disputed domain name to illicitly target the Complainant’s rights. Indeed, on the face of it and without the context of the Licence, the Respondent’s conduct seemed particularly egregious as the website included a reproduction of the Complainant’s logo. If the Respondent had not filed a Response, the Panel would be considering a very different case. The Response has proved essential in revealing the real nature of this dispute.

SoCal IP Law Group LLP represented the Complainant. The Law Office of Catherine Anne Allen represented the Respondent.

You love fruit. I love this UDRP

by — Policy & Law 0 Comments

A WIPO panelist draws important distinctions in deciding a case for YouLoveFruit.com.

A picture of YouLoveFruit fruit leathers

The company that sells these fruit leathers lost a UDRP to get the domain name YouLoveFruit.com. Images from Complainant’s website.

A National Arbitration Forum panelist has denied a cybersquatting dispute against the domain name YouLoveFruit.com. Panelist Nicholas Smith made several key distinctions that other panelists should pay attention to.

The Complainant You Love Fruit Inc. is a New York company that sells dried produce products under the names You Love Fruit and You Love Veggies. It uses the domain name YouLoveFruitLeather.com.

First, Smith noted that the domain name is made up of three generic words — you, love, fruit. While the Complainant has a trademark, it’s only for fruit leathers. Smith pointed out that the Complaint did not show evidence that the mark was so well-known and ubiquitous that he could conclude, for that reason alone, that the domain owner registered the domain for that reason.

Second, Smith understood something about GoDaddy’s parked domain pages. The Complainant argued that the domain owner registered the domain to sell it because it is being offered for sale by GoDaddy. Smith noted that the parked page is GoDaddy’s standard holding page that includes a link to “Get this Domain.” This is something GoDaddy puts on all parking pages that lets people use GoDaddy’s domain buy service. Smith correctly stated that it’s not indicative that the domain owner is selling the domain.

Finally, Smith points out that UDRP was designed only for limited circumstances:

The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”).  In the present case Respondent has registered a domain name consisting of 3 descriptive words that happens to correspond with YOU LOVE FRUIT mark and redirected the domain name to a parking page operated by the Registrar.  Absent any evidence of fame of the YOU LOVE FRUIT mark or any other evidence that Respondent has engaged in bad faith conduct, those facts are not sufficient to establish bad faith under the Policy.

There is something else a bit interesting about this case. The domain owner didn’t respond, but historical Whois records show that the domain owner registered the domain before the Complainant filed its intent to use trademark application for You Love Fruit. But only by a few months. Both the Complainant and Respondent are in New York. This could be a coincidence, and the Complainant makes no mention of any relationship between the parties in its filing (at least, that is included in the published decision).

 

Spase.io tries reverse domain name hijacking

by — Policy & Law 0 Comments

A new company goes after domain registered in 2005.

Picture of masked man with the words reverse domain name hijacking

The owner of a business called Spase has been found to have tried reverse domain name hijacking the domain name Spase.com.

Spase is a service that converts photographs into 3D models. The business was just launched last year at Spase.io. The owner of Spase.com registered it in 2005.

In other words, this was a dead-on-arrival UDRP filing. The Complainant could not show that the domain registrant acquired the domain in 2005 to target a business that launched in 2019.

It’s another example of a case that could have been avoided if UDRP providers would ask a simple question on their intake form:

Do you claim trademark rights that predate the current registrant’s registration of the domain name?

If the answer is no, the UDRP provider can explain to the Complainant that they don’t understand the policy and are wasting their time and money.

In this case, the Complainant wasted money filing the UDRP and paying for a three-member panel as requested by the Respondent. The Respondent had to pay for the panel and hire an attorney. It was a waste of both parties’ time.

The Complainant, Sahil Gupta, was internally represented. Greenberg & Lieberman represented the domain owner Mrs. Jello, LLC. William Towns, Knud Wallberg, and Neil Brown decided the case for World Intellectual Property Organization.

 

Denmark firm tries reverse domain name hijacking Mountaintop.com domain

by — Policy & Law 0 Comments

Panel determines the case was “dead on arrival”.

Picture of masked man with the words reverse domain name hijacking

Mountain Top ApS, which manufactures covers for pick up truck beds, has been found to have engaged in reverse domain name hijacking over the domain name Mountaintop.com. The company uses the domain Mountaintop.dk for its website.

The owner of the domain registered in 1995. The Complainant argued that there was a transfer in ownership in 2012-2013 and that this should count as the registration date. But the transfer was merely a change of registrant name involving the same owner. Even if it was a transfer, the new owner used Mountaintop in its brand, showing rights or legitimate interests in the domain. (Mountain Top claims common law trademark rights dating to 2002, hence its desire to show a transfer date after it claims rights).

The domain owner has used the domain for a personal blog and email.

While the Complainant could not find the owner’s full details in Whois at the time it filed its case, it was made aware of them during the verification phase and did not withdraw the case. A bit of additional research before filing the case would have shown the domain’s use over the years, too.

A three-person World Intellectual Property Organization panel ruled that this was a case of reverse domain name hijacking even though the domain owner didn’t ask for it.

…This Complaint was dead on arrival and likely would have been denied had there been no Response. The Complainant’s entire case on bad faith is that the Respondents registered the Disputed Domain Name intending to sell it to the Complainant. Not only is this allegation supported by no evidence at all, the charge is grounded on a theory of constructive notice that has long been held to be inadequate for Policy purposes (see WIPO Overview 3.0, section 3.2.2) and the obviously spurious statement that “mountaintop” is not a common term. The Complainant, which bears the burden of proof on each Policy element, did at best minimal due diligence once it learned the identity of the Respondents – enough to find that the Respondent Business used the term in its business name, something that normally constitutes bona fide use. “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH.” Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, quoting from Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.

The Complainant’s allegation that the Respondents acquired the Disputed Domain Name to sell it to the Complainant has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondents have never offered or invited offers to sell the Disputed Domain Name and did not respond to the Complainant’s offer to purchase the Disputed Domain Name for that reason.

The Complainant also failed to demonstrate that it had been targeted by the Respondents or provide any evidence to support a conclusion that an individual or organization in the United States was likely to be aware of the use of the Trade Mark (a common English word mark) by a Danish automotive parts supplier.

The Panel considers the Complainant likely launched the proceeding either in anticipation of a default or, more likely, to encourage the Respondents to engage in negotiations with the Complainant to sell the Disputed Domain Name. Either such motive belies the Complainant’s undertaking, required by paragraph 3(b)(xiii) of the Rules, “that this Complaint is not being presented for any improper purpose”…

It appears that Mountain Top’s interest in the domain might be because it’s opening a production plant in the U.S. it announced the plant yesterday.

Elmann IPR Law Firm represented the Complainant. John Berryhill represented the Respondent. The panelists were John Swinson, Andrew Lothian, and Richard Lyon.

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