A recent decision that came from WIPO highlights some circumstances where reverse domain name hijacking (RDNH) will most likely be found. The domain name at issue was maisondumonde.com. The important facts for RDNH were primarily pointed out by the Respondent:
According to the Respondent, at the time of registration of the disputed domain name, the Complainant was unknown outside France. Only now is it known in France, Belgium, Italy and Spain where it has opened stores in the last few years. In 1996, the Complainant’s product offer was primarily gifts and accessories, but not furniture. Even today, this continues to be the majority of their product offer in their brick-and-mortar stores, and much of the Complainant’s product range still concentrates on non-furniture products.
The Respondent alleges (but does not provide evidence to show) that the Complainant only offered furniture for sale gradually after 1996 and only started developing its website in 2004. The Complainant’s furniture sales business on the web only started to take off in 2006.
The Respondent states that his product offering has not changed significantly since 2000, when he first started selling furniture in brick-and-mortar stores, and via the Internet, through the disputed domain name which was registered at the same time, together with <maisondumonde.co.uk>.
Further, says the Respondent, when the disputed domain was registered in 2000, the Complainant was a small company in France and had no more claim to use the disputed domain name than anybody else in any country other than France where it had successfully received trade name protection in its home territory.
The Respondent goes on to provide his version of the discussions between the parties that started in 2006. As stated above, the Panel will not summarize those discussions in any further detail because it considers that they are not relevant for the present case.
The Respondent states (and provides evidence to prove) that the authority that rejected his opposition to the Complainant’s CTM application found that “one of the few undisputed points in the proceedings is the fact that the presented evidence is sufficient to prove that the opponent has actually used the name Maison Du Monde in the course of trade”, in particular in the UK, primarily in the London area. (emphasis added)
The Panel found that the Respondent did have some rights or legitimate interests in the domain name, from which it had been operating its business selling furniture since 2000, and also found that there was no evidence of bad faith on the part of the Respondent in registering the domain name.
In the present case, the Complainant knew that the Respondent was offering furniture for sale in 2000 when the Respondent first registered the disputed domain name, and the Complainant did not present any evidence showing that that business was not bona fide back in 2000. Further, the Complainant did not rebut, in its unsolicited rebuttal, the Respondent’s allegation to the effect that his activities were perfectly legitimate back in 2000. After having received the Response, the Complainant should have known that its case was insupportable under the Policy.
While the Panel does take good note of the Complainant’s allegations concerning the situation since 2006, it has no choice but to apply the Rules and to find Reverse Domain Name Hijacking, for the reasons explained above. (emphasis added)
The part that’s a little funky is “After having received the Response…” So, the Panel is creating a duty to withdraw a complaint? Hmm. In any event, they should have been prepared to argue that the Respondent knew about their business prior to starting his business in 2000. Still, I don’t see how they could have overcome the Respondent’s argument that their respective goods/services were not similar at that time (and thus it would not have been a trademark issue back then).
The Panel does wish to note, in addition, that the Response and the Respondent’s unsolicited submission were unnecessarily lengthy because they included certain allegations (not summarized above) and hundreds of pages of exhibits that were not relevant for the present case.
Looks like the Panel wasn’t very pleased with the amount of reading material it was subjected to. There are page limits, but they seem to be routinely ignored. Something to keep in mind: don’t annoy your panel! Although in this case it doesn’t seem to have affected the outcome.
A recent WIPO UDRP decision contains language to the effect that it is “reasonable” to infer that a registrant of a ccTLD domain name knew or checked the corresponding gTLDs for similar registrations. The UDRP case involved the domain name infotools.co, which is the ccTLD for Colombia, and has been marketed as an alternative to .com gTLDs.
The Panel notes the Respondent’s claim to want to use the Domain Name for future services of his/her company Technolyst.Inc in Colombia. The Panel finds this explanation highly improbable since this company does not appear to use the name anywhere “Infotools” on its website.
It is also apparent from the evidence that the Respondent and T. Dayal have registered large numbers of domain names. It is therefore reasonable to infer that they would have checked who owned the domain name <infotools.com> before registering <infotools.co> and found that it was the Complainant.
In these circumstances, it does not appear to the Panel that the Domain Name was directed to a web page containing sponsored links innocently as a temporary measure pending a genuine commercial use of the Domain Name. Rather, the Panel infers that the Respondent intentionally attempted to attract Internet users to the web page by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web page, for commercial gain in the form of click-through commissions. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of bad faith registration and use, or at any rate would have done so if T. Dayal had remained the registrant.
The Panel further finds that the Domain Name was transferred to the present Respondent in bad faith in the hope of defeating the Complaint. The Panel infers that the Domain Name was registered in the name of the Respondent with the likely intention of continuing the previous use for sponsored links and/or with a view to sale to the Complainant at a profit.
In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. (emphasis added)
So there was some shenanigans going on with transferring the domain name to attempt to avoid an adverse decision under the UDRP, which ultimately proved both futile and probably helped the Complainant’s case, as anyone who has children will know: when they’re acting guilty, they invariably have done something they shouldn’t have.
Still, this is an interesting decision because the panelist seems to believe that the registrant(s) knew about the company that owned infotools.com, and purposefully chose infotools.co to profit on the misdirected traffic (this is, in essence, a typosquatting case). And yet there’s a totally different side of this that the panelist didn’t get into: the generic nature of the mark at issue. Apparently that issue wasn’t raised because the respondent(s) did not raise it, and that’s a classic example of why you should protect your domain name portfolio. I think this one could have easily gone the other way.
Domain Name: Hubgrub.com
Elements Not Met: All
Case: GrubHub, Inc. v. GJ Nelson, No. FA 1327153 (Nat’l. Arb. Forum July 20, 2010).
Grubhub, the awesome website that you can use to order up food, didn’t think it was all that awesome when it found out a guy in Massachusetts registered the Domain Name. So it filed a UDRP Complaint. But there were some problems.
The Panel disregarded Grubhub’s trademark registration, because it was in the name of the founder and not the company (who was the Complainant). Without any evidence that the registration was assigned to the company, the Panel refused to find that it stood for any ownership rights in the Complaint. But that’s not all — the Panel also found that the HUBGRUB and GRUBHUB, though interpositions of the same two words, were not confusingly similar.
