Archive for the ‘reverse domain name hijacking’ Category
Company that makes UDRP threat found guilty of reverse domain name hijacking.
“If you don’t sell me your domain for $2,000, I’ll file a UDRP against the domain name.”
That’s effectively what a United Kingdom company threatened against the owner of the domain name edgePOS.com, according to the findings of a recent UDRP decision.
John Henderson (Holdings) filed a UDRP complaint against Xiaodong Zhang of Austin, Texas, over the domain name. Zhang said he registered the domain name for a point of sale system before the complainant wanted to start using the term.
According to Zhang, the complainant communicated with him on March 19, 2012 to ask him to sell the Disputed Domain Name (again). Following the respondent’s refusal the complainant threatened to institute a UDRP if the Zhang did not agree to an “offer of $2000”.
Ouch.
Perhaps John Henderson Holdings should have read up on the UDRP before making this claim. Its subsequent filing apparently lacked any support that Zhang registered and used the domain in bad faith.
Panelist Alistair Payne found in Zhang’s favor and also found John Henderson Holdings guilty of reverse domain name hijacking.
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Your comadre wouldn’t approve.
The National Arbitration Forum has found against Texas company Comadre Commerce, LLC in arbitration over the domain name Comadre.com.
This is despite the owner of the domain name not responding. Had the owner responded, this case could have been an easy case of reverse domain name hijacking.
First things first, comadre is a generic term meaning “godmother” in Spanish.
Second, Comadre Commerce said it had a trademark registration with the U.S. Patent and Trademark Office. But it only attached a printout from the USPTO concerning a Trademark Office Action Response. Here’s why: it really just has pending application that was filed after the respondent registered the domain — and it was filed as an intent to use application. So there’s no way the complainant could argue that the respondent registered the domain name in bad faith. It tried anyway.
The complainant also claimed that it made several reasonable offers to the domain owner, which the owner denied or ignored.
There’s also the puzzling assertion that (in the panelist’s words) “Respondent’s unauthorized use of Complainant’s image on Respondent’s various websites constitutes copyright and trademark infringement in violation of Title 17 U.S.C. Section 106(a) of the Copyright Act of 1976.”
Given that the complainant tried to buy the domain name multiple times and the domain was registered prior to its intent-to-use trademark filing and it’s a generic term and the Comadre Commerce was represented by counsel, I’d argue this is a clear case of reverse domain name hijacking.
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Company files dispute for UDRP in bad faith.
Frank Schilling, with the help of attorney John Berryhill, has convinced a UDRP panel that AINS, INC is guilty of reverse domain name hijacking in a dispute over eCase.com.
AINS, Inc has a trademark for “ecase” for its software for workflow and case management. It claimed a first use in commerce date of 2009 on its trademark application.
Schilling acquired the domain name eCase.com in 2002, so the case had no chance of succeeding.
So AINS’ attorney Janice W. Housey of Symbus Law Group, LLC claimed that each time the domain was renewed the domain was a “renewal in bad faith”. It’s ridiculous, but she made another mistake that made it even more troublesome: she neglected to show that the domain was renewed after AINS got its trademark rights.
Making matters worse, it appears that an employee of AINS sent a misleading communication to Schilling in an effort to buy the domain. According to the case, AINS’ Director of Business Development and Vice President of Sales sent an inquiry that read:
“Due to today’s economy, I am starting a home business. I am interested in your domain name as it is a good fit for services I want to provide, and am able to propose $1,500 for the rights to the name. I can be reached via my home email . . .”
Berryhill noted that this is “a willfully false communication by interstate or international electronic means originating in the United States, for the purpose of obtaining a thing of value on false pretenses, i.e. “wire fraud” under the relevant federal criminal statute:18 USC § 1343.”.
It didn’t help that the attorney also sent a couple inquiries to Schilling’s company without identifying herself.
The three person panel found against AINS and that AINS was guilty of filing its case under the policy in bad faith, i.e. reverse domain name hijacking.
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Law firm files “baseless” case to get four letter domain name.
I really hope a new law firm that seeks to “break with routine thinking in the legal industry” doesn’t have an intellectual property practice.
Denmark lawfirm IUNO Advokatpartnerselskab has lost a UDRP for the IUNO.com and has been found guilty of reverse domain name hijacking.
The domain name was registered in 2000; the law firm just opened its doors this year.
Panelist Tony Willoughby had some harsh words for IUNO.
In formulating the Complaint the Complainant has fallen into serious error.
The Complainant appears to have taken the view that registering a domain name for the purpose of selling it is of itself in some way reprehensible, when of course it is not (at least absent an intent to sell the owner of an identical or confusingly similar trademark, or a competitor thereof). There is a lawful trade in domain names running into millions of dollars per annum. If the Panel has understood the Complainant’s evidence correctly, it appears that when the Complainant attempted to purchase the Domain Name online, the price demanded for the Domain Name increased from about USD 10,000 to USD 50,000. No doubt, when the Complainant disclosed its identity, the Respondent appreciated that a higher sum could be demanded of an entity having a name identical to the Domain Name. Whatever the reason, there is nothing to demonstrate that this is behaviour meriting a finding of bad faith under the Policy. Pricing a domain name at the highest level the registrant believes it can encourage a purchaser to pay is not of itself objectionable absent evidence of targeting a particular trademark owner.
Responding to the domain owner’s allegation of reverse domain name hijacking, IUNO responded that:
…the Complainant seeks to stress the fact that the Complaint is not an aggressive attempt to obtain what is potentially a valuable name for its new business. The Complainant genuinely finds that the Respondent has no legal rights or legitimate interests in respect of the Domain Name and only holds it passively, now with the purpose of selling it to the Complainant for an amount in excess of out-of-pocket expenses.
Um, OK.
Willoughby concludes that IUNO either brought the case in bad faith or is inept:
The Complainant is a law firm and the Panel finds it difficult to believe that a law firm would intentionally set out to abuse the process in this way. Equally, the Panel finds it astonishing that a law firm could produce such a fundamentally flawed Complaint.
I particularly appreciate how he spells out the exact hardships IUNO brought on the domain owner by filing the case:
(b) ought to have been aware that to launch it in this form would put the Respondent to unnecessary and irrecoverable expense;
(c) ought to have been aware that false allegations of bad faith necessarily give rise to concern and distress on the part of the person falsely accused;
(d) ought to have been aware that if the Complainant had succeeded, the Respondent would have been wrongfully deprived of the Domain Name.
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WIPO panel finds complaint against DigiMedia.com was brought in bad faith.
Legendary domain name investor Scott Day’s company DigiMedia.com has won a charge of reverse domain name hijacking against a Dubai company.
Prime Pictures LLC filed the case in an attempt to get the domain name CinemaCity.com.
But DigiMedia.com had registered the domain name way back in 1998, about 7 years before the complainant used “CinemaCity” in commerce. That clearly means the domain name wasn’t registered in an attempt to harm the complainant.
The three person World Intellectual Property Forum panel found Prime Pictures guilty of reverse domain name hijacking, saying its counsel should have been aware that its case was doomed before it even began.
In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint.
The Complainant is represented in this proceeding by legal counsel who has evidently examined the UDRP and a number of cases decided under it, which are cited in the Complaint. Any reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith.
DigiMedia.com was represented by John Berryhill.
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3DCafe, Inc. found guilty of reverse domain name hijacking.
A three person National Arbitration Forum panel has called out 3DCafe, Inc. for attempted reverse domain name hijacking in a case over 3DCafe.com.
The complainant argued that it had rights from its “predecessor in interest” for the term 3DCafe dating back to 1991. But the domain name owner, with the help of attorney Ari Goldberger, poked holes in the complainant’s arguments.
The panel determined that 3DCafe, Inc. and its lawyer Danielle I. Mattessich of Merchant & Gould had provided scant evidence of any sort of common law rights to the mark when the domain name was registered. While not invoking the doctrine of laches, the panel also cited New York Times Co. v. Name Administration Inc. and the significant delay between when the domain was registered and when the case was filed.
In finding reverse domain name hijacking, the panel wrote:
In the present circumstances, the lack of a trademark, the delay by the Complainant and the fact that the Complainant itself showed no evidence of any right to any common law rights to a mark, all combine to infer that the Complainant acted in bad faith. The Panel therefore makes a finding of reverse domain name hijacking.
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ISP tries to get domain name registered many years before it even existed.
A World Intellectual Property Forum panel has found California internet service provider Webpass, Inc guilty of reverse domain name hijacking in its attempt to get the domain name WebPass.com. The ISP uses Web-Pass.com as its web page.
Webpass, Inc. didn’t start using the Web Pass name until 2007, but the current registrant of WebPass.com registered the domain name in 2001. As such, it’s impossible that the domain name was registered in bad faith unless the owner is psychic.
Webpass, Inc. and its representative (Law Office of Richard J. Greenstone) pointed to a misguided case Telstra Corporation Limited v. Nuclear Marshmallows that some rogue panelists have used to argue a domain name doesn’t have to be initially registered in bad faith to still be in violation of UDRP rules.
But panelist Richard Hill wasn’t swayed. He was also a bit miffed that the complainant incorrectly argued that webpass.com hadn’t been used and this was evidence of bad faith:
The Complainant argues that the Respondent has not used the disputed domain name, and that this demonstrates his bad faith. But this allegation is not correct. As the Complainant itself points out, the Respondent has used the disputed domain name in the past.
In finding reverse domain name hijacking, Hill wrote:
The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the mark WEB PASS. Indeed, the Complainant annexes a printout of the WhoIs registration to the Complaint, and that printout indicates that the domain name was created well before the Complainant’s first use in commerce of its mark. In this Panel’s view, this is sufficient to find reverse domain name hijacking.
This is another example of a case in which the domain name owner shouldn’t have had to put up a defense at all.
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Company goes after domain name registered several years before it created its brand.
Nat Cohen’s Telepathy, Inc. has successfully won a charge of reverse domain name hijacking against X6D Limited, which owns the XPAND brand of 3-D glasses.
X6D filed the complaint over the domain name xpand.com. Telepathy, represented by domain name attorney Ari Goldberger, noted that it’s common to eliminate the ‘e’ in words that start with ‘ex’. The panel agreed, arguing that xpand was a single descriptive word:
The Panel considers the disputed domain name contains at its second level a single descriptive term. Many English words starting with “ex“ are commonly misspelled by omitting the “e” at the beginning, inter alia, “xtreme” (misspelling of “extreme”), “xchange” (misspelling of “xchange”), “xcess” (misspelling of “excess), “xact” (misspelling of “exact”), “xcel” (misspelling of “excel”), and so forth. In the Panel’s assessment, the public readily identifies the misspelled word in these cases.
The panel also agreed that buying descriptive and generic domain names as an investment is a legitimate use of a domain name:
Due to the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder. Such a practice – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights.
All of this is well and good, but the real crux of the case came down to dates. Telepathy registered the domain name in 2003, three years before X6D says it started using the XPAND brand. Thus, it’s impossible that the domain name was registered in bad faith targeting X6D. X6D offered $10,000 to buy the domain name. When that failed, it filed the UDRP.
This helped Telepathy win a charge of reverse domain name hijacking:
In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.
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French company guilty of reverse domain name hijacking for VirtualExpo.com.
A French company has been found to have attempted reverse domain name hijacking of the domain VirtualExpo.com.
M. Corentin Benoit Thiercelin, who claims to run a company called VirtualExpo, filed the complaint with WIPO to get the domain name. The domain was registered in 1996, well before the complainant filed trademarks on the name. The earliest of the trademarks was registered in 2005.
The panelist pointed out that it was impossible that the domain was registered with the complainant’s future trade name in mind:
The Complainant asserts in the Complaint that “The Domain Name was only registered in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name”. On the papers before the Panel this was a wild, unsupported and wholly misconceived claim.
In finding that the case was brought in bad faith, the panelist wrote:
In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.
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Lawyer states that his client’s interests are more important than domain owner’s, so they should get the domain name.
A World Intellectual Property Organization domain arbitration panelist has some harsh words for Credit Europe Bank and lawyer Novagraaf Nederland after it brought a case against the owner of CreditEurope.com.
The registrant of CreditEurope.com got the domain name in 2003, several years before Credit Europe Bank started trading under the Credit Europe name. In its case, Credit Europe’s lawyer said the business had been in existence since 1994, but failed to mention the name change.
Panelist Richard Lyon said Credit Europe tried to mislead the panel with this omission, violating the lawyer’s certification, required by paragraph 3(b)(xiv) of the Rules, “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, . . .”
Lyon also said the complainant violated paragraph 3(b)(xiv) for not suggesting a reason the panel should deviate from significant precedent that a domain name registered prior to the date a trademark is used can’t be registered in bad faith.
But perhaps most troubling in the dispute is the Credit Europe lawyer’s claim that it is more important than the domain owner, so it should get the domain name. The lawyer literally wrote:
It should be clear that my client’s interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].
Wow.
Richard Lyon responded:
Bluntly stated, Complainant, or Complainant’s representative, seems to believe not only that under some inchoate and undisclosed standard that Complainant has a greater entitlement to the domain name than Respondent, but also that this belief justifies relief in a UDRP proceeding. This latter assertion of course has no foundation in the Policy, and its use constitutes a flagrant abuse of the entire UDRP process
Lyon said Credit Europe had “no excuse” for its failure to understand UDRP.
Amazingly, Lyon was the only one of three panelists to find Credit Europe brought the case in an attempt at reverse domain name hijacking. All three, however, believed the domain name wasn’t registered in bad faith.
The respondent was represented by domain name attorney John Berryhill.
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