Personal Communication Systems, Inc Gulity Of RDNH On Healthwave.com

Personal Communication Systems, Inc. of Winston-Salem, North Carolina, represented by Bell, Davis & Pitt, P.A. was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name healthwave.com.

The Complainant registered a trademark on the term HEALTHWAVE in October 2012.

The domain holder registered the domain in 2002

The one member panel of Andrew D. S. Lothian wrote:

“The Respondent in the present case has requested that the Panel make a finding of Reverse Domain Name Hijacking on the grounds that the Respondent had peacefully used the disputed domain name for more than 10 years before the Complainant’s trademark rights came into being and could not therefore have registered the disputed domain name in bad faith.”

“The Panel agrees with the Respondent’s analysis, as is borne out by its finding above.”

The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint.

In the Panel’s opinion, the answer to that question must be in the affirmative.

The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark.

As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.

In these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.””

UDRP Panel Finds Reverse Domain Name Hijacking On BigBang.com

Javier Zetter Casillas of Guadalajara, Mexico, represented by  AN-KI, Mexico,  has  been found guilty of Reverse  Domain Name Hijacking (RNDH) on the domain name BigBang.com,  which is owned by Vertical Axis Inc. which was represented as usual by ESQwire.com PC.

Mr Casillas brought his case based on trademarks in the United States , Canada and Mexico based on registered trademarks for the term “Big Bang Identidad Enmpresarial” the earliest of which was filed in Mexico on June 9, 2006 and the most recent filed with the  European CTM in 2011.

The Complaint had two trademarks for the term “Big Bang” in Canadian and Mexico but not until 2010.

The domain was was registered by the Vertical Axis on March 3, 2006

The three UDRP panelist  Johan Sjöbeck, Pablo A. Palazzi and The Hon Neil Brown Q.C. found that the Complainant  engaged in RDNH:

“”In the view of the Panel this is a Complaint which never should have been launched. The Complainant knew that the disputed domain name was registered at least three months before the Complainant applied for the trademark BIG BANG IDENTIDAD EMPRESARIAL and more than four years before the Complainant applied for the trademark BIG BANG.””

“The Panel agrees with the Respondent’s claim that the term “big bang” is comprised of two common generic and descriptive English dictionary words most commonly known as the shortened form of “The Big Bang Theory”. The Panel also agrees with the Respondent’s claim that the term “big bang” is a descriptive statement for a loud sound or massive explosion.”

“The Complainant has stated that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name but has not submitted any evidence or arguments to support its statement.”

“The Respondent uses the disputed domain name within the generic or descriptive meaning of the words “big bang”.

The website to which the disputed domain name resolves contains sponsored links, none of which are associated with the Complainant.

The WIPO Overview 2.0, at paragraph 2.2., states “[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

“On the basis of the evidence submitted by the parties, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interest in respect of the disputed domain name. Accordingly, the second requirement of the Policy is not established.”

“The Complainant claimed that the Respondent registered the disputed domain name in bad faith but did not submit any evidence to support its claim. Thus, the Complainant knew or should have known at the time the complaint was filed that it could not prove one of the essential elements required by the UDRP”.

“The submitted evidence in the case before the Panel indicates that the Respondent acquired the disputed domain name three months before the Complainant filed its application for the trademark BIG BANG IDENTIDAD EMPRESARIAL and more than four years before the Complainant filed its application for the trademark BIG BANG.”

“Considering that the disputed domain name was registered before the Complainant even applied for the rights upon which the Complaint is based and since there is nothing before the Panel indicating that the Respondent should have been aware of the Complainant’s plans to apply for the trademark BIG BANG IDENTIDAD EMPRESARIAL, the Panel finds that the Complainant has failed to prove that the domain name registration was made by the Respondent in bad faith.”

It has been argued by the Complainant that the Respondent hijacked the disputed domain name in order to sell it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. However, the Complainant has not submitted any evidence to support a finding that the Respondent is attempting to trade on the Complainant’s trademark.

The Complainant waited over eight years from the date the Respondent purchased the disputed domain name to file a Complaint. The Panel finds the long delay unexplained and detrimental since it makes it harder to ascertain the motives of the parties so long ago.

Considering all the above, there is nothing in the case before the Panel to support the Complainant’s claim that the disputed domain name was registered and is being used in bad faith.

“Considering the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Inbay Limited of London Guilty Of Reverse Domain Name Hijacking

Inbay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keystone Law, United Kingdom has been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name inbay.com which was registered back on December 11, 1998.

The trademark which inBay Limited of London based their claim on wasn’t filed until 2012.

Here are the RDNH findings by the three member panel of Nicholas Smith Nick J. Gardner, and Diane Cabell:

This is a Complaint which should never have been launched.

The Complainant knew that the Domain Name was registered before the Complainant came into existence and several years before it acquired any rights in the INBAY Mark.

The Complainant made (through two of its employees who did not disclose they were acting on behalf of the Complainant) two approaches to the Respondent seeking to purchase the Domain Name, and did not disclose this fact in its Complaint. Following the rejection of those offers and the registration of the INBAY Mark, the Complainant chose to bring this Complaint. It did so without any prior notice in terms of formal communication to the Respondent. Whilst there is no obligation upon the Complainant to have sent such communication had it done so it would likely have been better appraised of the relevant facts and gained a better understanding of the weaknesses of its case.

The Complainant, in its original Complaint, identified that the Domain Name had been registered in December 1998.

The Complaint also acknowledged that the Complainant itself did not come into existence until 2008, and its registered trademarks were not applied for until 2012.

It also acknowledged that its predecessors in title had carried on business since 2002. It was accordingly quite clear there was a disparity in dates given that the original registration of the Domain Name predated by many years any relevant rights of either the Complainant or its predecessors. Instead of addressing this disparity, the Complaint simply asserted that the actions of the Respondent in offering the Domain Name for sale, somehow amounted to the Respondent registering and using the Domain Name in bad faith. Given the nature of the Policy and previously decided UDRP cases on this issue, this was an argument that had no reasonable prospects of success.

It was apparently only when the Complainant saw the Response that it realised that the Respondent had in fact registered the Domain Name later than it had previously alleged, i.e. in 2007. As the Respondent notes this is something the Complainant could have found out easily had it made some simple investigations before filing the Complaint.

In any event having reviewed the Response, the Complainant then belatedly sought to develop more forcefully the arguments that the Respondent’s registration of the Domain Name was in bad faith by reason of the Complainant’s predecessors activity prior to 2007.

As indicated above the Panel is unpersuaded by this submission.

In any event, even if the Complainant’s recast case does establish that its predecessors in title had acquired common law rights in the name “inbay” by 2007, that case still fails to explain why any such rights should have been known to the Respondent (beyond asserting incorrectly that he was under a duty to search for such rights and/or he had constructive notice of such rights).

Even more significantly the Complainant fails to explain why any such rights extend beyond the United Kingdom. Accordingly it was wholly unclear why it was said that the Respondent, even if he had identified the activities of the Complainant’s predecessors in title, should not have registered the Domain Name.

This was a case that, on the facts as known by the Complainant at the time it commenced this proceeding, and even after it had received the Response, had no prospect of success and should never have been brought.

The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Cobb International Of South Africa; Guilty of Reverse Domain Name Hijacking

Cobb International (Pty) Limited of Wynberg, Sandton, South Africa, represented by DM Kisch Inc., South Africa. has been found  Guilty of Reverse Domain Name Hijacking (RDNH) on the domain names cobbamerica.com and cobbq.com

The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel notes that in the original Complaint the heading of the section relating to paragraph 4(a)(iii) of the Policy is headed “The domain name is being used in bad faith” whereas the heading in the model form from which the Complaint was derived reads “The domain name(s) was/were registered and is/are being used in bad faith”.

“Neither the Complaint nor the amendment to the Complaint contains any allegation that the Domain Names were registered in bad faith.”

Instead it is asserted that paragraph 4(b)(iv) of the Policy enables a finding of bad faith registration and use on the basis of bad faith use alone.

The bad faith allegations concern the continuing use of the Domain Names by the Respondent and the Respondent’s attempts to sell the Domain Names to the Complainant and others for USD 50,000 upon termination of the distribution agreement.

This Panel has had occasion to make findings of Reverse Domain Name Hijacking in circumstances where the complainant was legally represented and where the complaint was based solely on bad faith use. In both those cases the complainants’ representatives had demonstrated knowledge of the UDRP and the need to establish what is known as the conjunctive requirement (bad faith registration and bad faith use).

Generally, in the view of the Panel, where a complainant is professionally represented, the complainant should be taken to have the knowledge of its representative. In both the above cases the case papers demonstrated relevant expertise in the hands of the complainants’ representatives. In this case the Complainant’s representative is well-known in the field of intellectual property and might, in the view of the Panel, be presumed to have the relevant expertise, but it appears to have taken the view that bad faith use on its own is sufficient to merit transfer of a domain name under the Policy. Was this an intentional “mistake” or ignorance?

The Panel doubts that a firm as distinguished as the Complainant’s representative would intentionally seek to abuse this administrative proceeding, but it is nonetheless the fact that the person responsible for drafting the Complaint worked from the online form available at the Center’s website and went to the trouble of changing the template heading as described in Section 5A above to omit any reference to bad faith registration.

Why?

Moreover, after the Center’s email communication of December 4, 2013 (see section 3 above), the Panel would have expected the Complainant to have focused on the issue of bad faith registration and come forward with express, relevant and clear arguments, but the Complainant did not do so.

Misconceived complaints of this kind put respondents minded to respond (many are not so minded) to significant and unnecessary expense. If the Respondent is making abusive use of the Domain Names (the Panel is insufficiently informed to make a finding one way or the other), there are other means available to the Complainant to seek redress.

In this Panel’s view, the strongest method available to panels to register their objection to fundamentally flawed complaints of this kind is to make findings under paragraph 15(e) of the Rules.

The Panel finds that the Complaint constitutes an abuse of the Administrative Proceeding.””

RPG Life Sciences Ltd. of Mumbai Guilty Of Reverse Domain Name Hijacking

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RPG Life Sciences Ltd. of Mumbai, India, represented by Anand & Anand, India has just been found Guilty of Reverse Domain Name Hijacking (RDNH) on the domain RpgLife.com by a one member UDRP Panel.

The domain name was registered back  on October 28, 2005

Despite generating some $47 Million in revenue in 2012-2013 the company tried to grab the domain name away from its owner without compensation.

Here are the relevant facts and findings by the one member panel:

The Complainant operates a pharmaceuticals and biotech business with operations in India, distributing product more than 30 countries.

The Complainant holds registrations for the trademarks RPG and RPG LIFE in India which it uses to designate pharmaceutical, veterinary and sanitary preparations for medical purposes.

The Indian registration for the mark RPG has been in effect since 1999 and the registration for RPG LIFE since October 2012, the latter claiming use from 1999. Approximate global revenue for sales of RPG brand product in 2012-13 was around USD $47 million.

The Respondent uses the Disputed Domain Name to resolve to a social media platform for players of games involving “role-playing” where participants pretend to be imaginary characters in fictional settings.

The Panel finds that the Complainant has rights in the mark RPG pursuant to Indian Trademark Registration No. 850255 from April 8, 1999, which predates registration of the Disputed Domain Name.

Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark RPG.

The Complainant has submitted no cogent evidence concerning the recognition of the word “RPG” as a trademark.

It has provided a number of copies of annual reports that do provide some evidence of the extent of advertising and sales and awards given to demonstrate recognition as a good employer but this Panel finds that there is no persuasive indicia of secondary meaning in the brand that might have occurred nor any evidence that it has been known in the trade or publicly as the source of any specific goods or services. Bald assertions are no substitute for evidence. UDRP panels have said on many occasions that allegations made in these proceedings must be supported by evidence and, indeed, the Policy makes it plain enough itself in paragraph 4(a) that “[…] the complainant must prove that each of these three elements are present.” This Panel finds the Complainant has not, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in “RPG” nor “RPG LIFE”.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the RPG trademark, the Panel observes that the Disputed Domain Name <rpglife.com> comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the descriptive word “life” (c) followed by the generic top level domain suffix “.com”

This Panel finds that the descriptive word “life” after the Complainant’s registered trademark is an additional element that does not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark.

This is particularly so here as the Panel also declines to find the mark is well-known.

 

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a “gaming and gambling” webpage and thereby acting illegitimately for the purpose of “piggybacking on the reputation and goodwill of the Complainant in India and worldwide”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant asserts that the use of its trade mark is unlicensed.

In its Response, Respondent offers a fulsome explanation as to how it selected and used the Disputed Domain Name, stating:

“The term ‘RPG’ is a common abbreviation in the game industry for a “Role-Playing-Game” which dates back to as early as 1974. A definition of such a game has been provided below:

“A role-playing game (RPG and sometimes roleplaying game) is a game in which players assume the roles of characters in a fictional setting. Players take responsibility for acting out these roles within a narrative, either through literal acting or through a process of structured decision-making or character development. Actions taken within many games succeed or fail according to a formal system of rules and guidelines. There are several forms of RPG. The original form, sometimes called the tabletop RPG, is conducted through discussion, whereas in live action role-playing games (LARP) players physically perform their characters’ actions. In both of these forms, an arranger called a game master (GM) usually decides on the rules and setting to be used and acts as referee, while each of the other players plays the role of a single character.

Several varieties of RPG also exist in electronic media, such as multi-player text based MUDs and their graphics-based successors, massively multiplayer online roleplaying games (MMORPGs). Role-playing games also include single-player offline role-playing video games in which players control a character or team who undertake quests, and may include capabilities that advance using statistical mechanics. These games often share settings and rules with tabletop RPGs, but emphasize character advancement more than collaborative storytelling. Despite this variety of forms, some game forms such as trading card games and war games that are related to role-playing games may not be included. Role-playing activity may sometimes be present in such games, but it is not the primary focus. The term is also sometimes used to describe role play simulation games and exercises used in teaching, training, and academic research.”

“The Respondent registered the domain name in dispute for the purpose of running a social website for the RPG player community, providing them also with a platform to discuss their RPG experiences. An extract from an archive history page from 2008 demonstrates this fact with the tagline, [“RPG LIFE: It’s a gamer’s life”] and the statement: “Welcome to RPGLife.com where we host everything about and for paper and pen role-playing. Our front page will be dedicated to what our moderators feel are the important need to know happenings in the industry. While the inside this site you’ll find much more details, feeds, and more exclusive events and blogging.” Throughout the site could be found various articles offering RPG related gaming advice, reviews, publications and forums, with the site continually being developed up until September 2013. Such valid and consistent use of the domain name for over 6 years would give rise to a finding of Respondent’s legitimate rights and interest. (See Annex 4)”.

This Panel accepts this submission as its authenticity is supported by evidence and finds that the letters RPG are, in addition to being a trade mark registered in India, a widely recognized acronym for the words “role playing game”. In this Panel’s view, in adopting that acronym the Respondent is making a legitimate commercial use of the Disputed Domain Name.

In so finding, the Panel is conscious of the serious nature of conduct that misleads the Internet using public in a pharmaceutical context.

The Panel shall refer to as the “idiot in a hurry” test, not even an idiot in a hurry could be misled that neither the Respondent’s website, nor the website it resolves to, is in any way connected with the Complainant.

The Panel finds that the Disputed Domain Name was not registered in bad faith and has not been used in bad faith.

Essentially, this is for two reasons.

First, the Panel has already noted that although the Complainant’s trademark RPG is registered in India from 1999, and it has been decided that “the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country”

The Respondent is simply using an established acronym for the words “role playing game” in conjunction with word “life” to resolve to a webpage directed to those Internet users who like that sort of thing. That being so, there is no evidence that the Respondent was motivated by bad faith towards the Complainant at the time the Disputed Domain Name was registered. There was therefore no registration of the Disputed Domain Name in bad faith.

Secondly, there has been no use of the Disputed Domain Name in bad faith as its use for the purpose, principally, of publishing articles and advertising goods and services applicable to “role playing games”, is entirely legitimate. The Panel finds that the Disputed Domain Name is a popular and commonly used acronym or phrase and this, in turn, is a defense to an allegation of bad faith

Moreover, there is no evidence that the Respondent pretended that it was the Complainant, advertised goods that the Complainant sells, tried to confuse Internet users, sought to damage the Complainant or its business or engaged in any other bad faith activities.

The Panel finds for the Respondent on the third element of the Policy.

Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking.

In the present case, the Panel considers that the Complainant’s professional representative should have appreciated, even on a rudimentary examination of the Policy and its application in this area, that the Complaint could not succeed where the Respondent’s Disputed Domain Name is a widely recognized acronym and is being used to promote goods and services available for purchase in that field, as it had no reasonable hope of meeting the conjunctive requirement of paragraph 4(a) of the Policy.

 

Accordingly, the Panel accepts the Respondent’s allegation that the Complaint was filed in willful disregard of the requirements of the Policy. It is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the Disputed Domain Name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant,

Further, the Complaint has misconceived the nature of UDRP proceedings in citing other domain names registered by the Complainant that contain the words “rpg life” including the following domains <rpglife.biz>, <rpglife.co.in>, <rpglife.in>, <rpglife.info> and <rpglife.org> as evidence that “clearly shows that our client has exclusive rights in domain names contained in the mark RPG LIFE”. UDRP proceedings are concerned with abusive registration of domain names and are not a test of who has the better rights to a disputed domain name nor who holds the most similar domain names.

Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith and that there was “no plausible explanation” as to the Respondent’s use (and presumably choice) of the Disputed Domain Name.

That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking.

Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent. Indeed, in a curious inversion of the roles of the Complainant and the Respondent, it was the Complainant who tendered evidence that the Respondent’s website was ostensibly concerned with Role Playing Games and activities associated with it and hence entirely legitimate and in good faith.

 

The Panel therefore makes a finding of Reverse Domain Name Hijacking.