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.

Aero Club of New Delhi, India Guilty Of Reverse Domain Name Hijacking on 14 Year Old Woodland.com

Aero Club of New Delhi, India, represented by Lall & Sethi Advocates, India was found guilty of Reverse Domain Name Hijacking (RDNH) by a one person UDRP WIPO panel on the generic domain name Woodland.com

Aero Club operates under the domain name woodlandworldwide.com which they registered in 2002 and tried to grab the shorter Woodland.com domain which was registered on November 26, 1999

“The Complainant is an Indian partnership, which commenced business with two retail outlets in New Delhi in 1992. It is engaged in the sale of footwear, casual wear and accessories under the name “Woodland”.

The Complainant is the registered proprietor of a large number of trade mark registrations featuring the name “Woodland” in one shape or form, some of them being WOODLAND word marks.

The territories covered by these registrations run mainly East from Eastern Europe, but the Panel noted a Norwegian registration, a Jamaican registration, a St. Lucian registration and a Venezuelan registration, a registration in the Dominican Republic and a few registrations in North and East Africa.

While the Complaint features a table listing the registrations, it does not date them. The earliest legible registration that the Panel has been able to locate from the voluminous annexes is Indian trade mark Registration No. 710548 dated July 23, 1996, for a device mark comprising the name “Woodland”, the device of a tree and the slogan “leather that weathers”. There is also Indian trade mark Registration No. 573949 dated May 25, 1992, for a device not legible in the exhibit, which the Complainant states is a device mark comprising the name “Woodland” and the device of a tree. For the purposes of this Decision, the Panel accepts that the 1992 registration is for the mark as described by the Complainant. Both registrations are in class 25 and cover footwear and other clothing.

The Complainant operates a website connected to its domain name,which it registered in 2002.

On January 31, 2013, the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights, accusing the Respondent of violation of those rights and demanding inter alia transfer of the Domain Name.”

“The Complainant’s contentions as to the Respondent’s bad faith intent at the time of registration of the Domain Name in November 1999 depend exclusively upon the Complainant’s claim that at that time the Complainant’s trade mark was not merely famous in India, but sufficiently famous for its fame not only to have reached the Respondent in Dallas, Texas, USA, but also to have motivated the Respondent to seek to exploit the value of the Complainant’s trade mark by way of the Domain Name.

The Complaint contains the following claims relating to the fame of the Complainant’s trade mark:

“Through long established and widespread use in many countries of the world, the aforesaid trade mark of the Complainant enjoys worldwide reputation.”

“By virtue of extensive sales and sales promotion activities carried out by the Complainant internationally, the trade mark WOODLAND is exclusively associated with the Complainant and the Complainant alone and has acquired an enviable reputation and goodwill.”

By virtue of its extensive worldwide use, the Complainant’s trade mark WOODLAND has become a well-known trade mark and was also recognized by a court in India.”

“Furthermore, at the time the Respondent registered the Domain Name, the Complainant’s WOODLAND trade mark had acquired the status of a well-known mark.”

“Since the Complainant’s Mark is well-known and the Respondent has no rights in the mark WOODLAND, it is evident that the Respondent registered the said domain with the sole intention of making unlawful commercial gain.”

“It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it.”

“Given the fame of the Complainant’s Marks as a trade mark and domain name, it is not possible to conceive of a use by Respondents No. 1 and/or No. 2 of the Disputed Domain Name that would not constitute an infringement of Complainant’s rights in its Trade Marks.”

These are very powerful claims both as to the widespread fame of the Complainant’s trade mark and as to the bad faith of the Respondent, but they face some formidable obstacles.

First, the trade mark is an ordinary English dictionary word in common use in English-speaking countries and it is notorious that where a mark is an ordinary dictionary word it requires very substantial cogent evidence to demonstrate (a) that the Complainant’s trade mark has acquired a secondary meaning sufficient to displace its primary meaning and (b) that the allegedly offending use being made of the word/mark is likely to be taken to be a use of the Complainant’s trade mark with its secondary meaning and not a use of the word with its primary meaning. Mere unsupported assertions are not enough.

Secondly, when did the Complainant’s trade mark achieve its status as an internationally well-known, famous mark? For the Complaint to succeed under the Policy on this basis (i.e. the international fame of the Complainant’s trade mark), the Complainant has to establish, as it has asserted, that this status had been achieved by November 1999 when the Respondent registered the Domain Name. Evidence is needed as to the international fame of the Complainant’s trade mark at that date. Mere unsupported assertions are not enough.

Thirdly, the fame has to have been likely to have reached the geographical area where the Respondent resides, namely the USA. Evidence is needed as to the Complainant’s trade and/or promotional endeavours in the USA as at November 1999. Mere unsupported assertions are not enough.

Fourthly, if any of the above evidence is weak, the Complainant will have to produce strong, cogent extraneous evidence to show that despite any shortcomings in the primary evidence, the Respondent is likely to have acted in bad faith when registering the Domain Name (e.g., that he is prone to adopting the well-known trade marks of others for commercial gain).

A striking feature of the Complaint is that apart from the evidence as to the Complainant’s trade mark registrations and the cease and desist letter sent on January 31, 2013, the Complaint is almost entirely made up of unsupported assertions. The Panel was given no evidence as to the Complainant’s sales or promotional expenditure whether in India or anywhere else. Indeed, the Complaint and its annexes contain no sales or promotional figures, nor do they contain any examples of advertisements or any third party evidence of the fame of the brand such as press cuttings or industry awards.

Even if one were to assume from the volume of the Complainant’s trade mark registrations that a significant amount of international trade had been undertaken under the WOODLAND trade mark, the Panel has no information at all as to what the volumes were as at 1999 when the Domain Name was registered. Nor significantly is there anything in the Complaint to indicate that the Complainant has ever traded or attempted to trade in the USA. The Complainant has no trade mark registration in the USA and in the Complaint the USA is not one of those countries expressly identified as a place where the Complainant conducts business. Indeed, apart from references to the Respondent’s and the Registrar’s addresses, the USA is not mentioned anywhere in the Complaint.

Despite these gaping holes in the evidence, has the Complainant nonetheless produced a sufficiently significant incriminating piece of evidence to show that the Respondent was in fact aware of the Complainant’s trade mark in November 1999 and is likely to have targeted that trade mark when registering the Domain Name? No, the Complainant has not.

The Complainant has left it 14 years before lodging the Complaint, which does not put the Complainant in a good starting position. It has complained about the Respondent’s failure to respond to its cease and desist letter of January 31, 2013, but it seems that that letter which was sent by post and by email was directed to the wrong addresses (not those on the Registrar’s Whois database). It has been alleged that the Respondent has tried to sell the Domain Name for an exorbitant sum, but the Respondent denies the allegation and the Panel has been unable to find any evidence in the case file to support the allegation. Finally, the Respondent has produced evidence to show that the Respondent’s parking page, visible to visitors situated in India1, once featured a link to a site mentioning the Complainant’s trade mark and some competing trademarks. However, the date of that page was August 28, 2013 which hardly supports the Complainant’s contention that the Respondent was out to profit on the back of the Complainant’s trade mark when registering the Domain Name back in 1999.

The Respondent denies that it had any knowledge of the existence of the Complainant and its WOODLAND trade mark in 1999 when registering the Domain Name. The Panel has found nothing in the Complaint to call that denial into question. The Panel sees no reason why a web development company in Dallas, Texas should have been aware in 1999 of the existence of an Indian “Woodland” footwear brand of no known repute. In so saying, the Panel is merely observing that the Complaint contained no evidence of any repute.

The Complainant’s response to the Administrative Panel Procedural Order has thrown a little more light on the background, but nothing that assists in explaining why in 1999, when the Respondent registered the Domain Name, it should have been aware of the existence of the Complainant or its WOODLAND trade mark.

Annex C to that response constitutes 152 invoices for the Complainant’s “Woodland” product dating from November 1993 to May, 2001. All are to customers with addresses in India. The Panel was not able to find any invoice addressed to anyone outside India.

In this case, the Respondent has reacted with commendable restraint to the outrageously misconceived and unsupported allegations of bad faith directed at it and has not requested a finding of Reverse Domain Name Hijacking.

However, as this Panel recently stated in Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, WIPO Case No. D2013-1603:

“For a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”). For a finding under this head, the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason.”

As with the Timbermate case, in this case too, the Complainant’s representative has cited previous UDRP decisions in support of its case. One of those cases was Veuve Clicquot Ponsardin, Maison Fondée en 1722 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and one only needs to look at the facts of that case to see how different they were from the facts of this case. Unlike this case, the complainant’s trade mark was not a dictionary word and unlike this case it is apparent that the complainant produced a wealth of detail to substantiate the fame of its mark. Moreover, unlike this case, the evidence showed that the respondent was a serial cybersquatter.

Another case cited by the Complainant was Playboy Enterprises International, Inc v. Hector Rodriguez, WIPO Case No. D2000-1016, another case with a materially different factual background to this case. The domain names clearly targeted the complainant (<playboychannel.com> and <playboynetwork.com>), the complainant’s trade mark would have been very well-known to the respondent (both parties being USA residents) and the respondent’s explanation was found by the panel to lack credibility. Moreover, the evidence before the panel was such as to lead the panel to go so far as to state: “In this connection the Panel notes that in its opinion, the Respondent’s actions in registering and now retaining both of the contested domain names evince bad faith in violation of the Anti-Cybersquatting provisions of the Lanham Act (15 USC § 1125(d)(1) with various factors indicative of ‘bad faith’ given in 15 USC § 1125(d)(1)(B)(i) though limited by 15 USC § 1125(d)(1)(B)(ii).”

The above cases were not borderline cases.

They were very clear cases of cybersquatting. T

his case too is not a borderline case, but for a very different reason.

The evidence of bad faith registration is non-existent.

There is nothing in the evidence to establish the fame of the Complainant’s trademark outside India and even if one were to assume that the trade mark registrations were evidence of commercial activity of the Complainant under the “Woodland” trade mark in the territories covered by those registrations, the USA is not one of those territories nor are any of the territories of North America.

Moreover, the only registrations that the Panel has been able to discover from the annexes to the Complaint (many of which are not in English), which pre-date registration of the Domain Name, are the Indian registrations detailed in section 4 above and registrations in Sri Lanka and Thailand.

The Panel was less than impressed with the passage in the Complaint reading: “In light of the foregoing, Internet users are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by the Complainant. Considering the Complainant already uses sites such as “www.woodlandworldwide.com”, the internet users would be confused into thinking that the Respondent enjoys authorization of the Complainant to do business.

It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it”.

When the Panel first read this, the Panel had assumed that the Complainant’s domain name woodlandworldwide.com pre-dated registration of the Domain Name.

It was only in response to a question in the Procedural Order that it transpired that the Complainant’s domain name was not registered until 2002.

The Panel fully appreciates that Internet users in territories where the Complainant’s trade mark is well-known may be confused by the Domain Name and that is a hazard for all owners of trade marks which are dictionary words, but the Complainant’s use of its domain name woodlandworldwide.com, which came into existence over 2 years after registration of the Domain Name, has no bearing whatever on the Respondent’s state of mind when it registered the Domain Name. The ambiguity evident in the above quote was unfortunate, particularly as the passage was in support of an allegation of bad faith against the Respondent.

Delay in filing a complaint under the UDRP is not necessarily fatal to the complaint, because there may be any number of understandable reasons for the delay.

For example, the complainant may have had no reason to be aware of the existence of the domain name in issue. In this case, however, as the Panel has found (on the basis of the evidence annexed to the response to Procedural Order No.1), by 1999 the Complainant’s WOODLAND trade mark was an established brand in the Indian sub-continent. In 2002 the Complainant decided for the first time to register a domain name featuring its WOODLAND trade mark. It registered woodlandworldwide.com.

Is it credible that the Complainant went straight for that domain name without first checking the availability of the Domain Name (<woodland.com>)? The Panel finds on the balance of probabilities that the Complainant was aware of the existence of the Domain Name in 2002 when it registered <woodlandworldwide.com> and knew then that it had no basis for attacking the Domain Name. The fact that a potentially objectionable advertising link appeared in August 2013 cannot, in the view of the Panel, in these circumstances sensibly be used to question the bona fides of the Respondent back in 1999.

Taking all the above into account, the Panel finds that in levelling manifestly wild and unsupported allegations of bad faith against the Respondent some 14 years after the Domain Name was first registered by the Respondent, the Complainant has brought the Complaint in bad faith and abused this administrative proceeding.

For the foregoing reasons, the Complaint is denied and the Panel makes a finding of reverse Domain Name Hijacking.

Tony Willoughby
Sole Panelist

Timbermate Products Pty Ltd Guilty Of Reverse Domain Name Hijacking

Timbermate Products Pty Ltd of Nunawading, Victoria, Australia, represented by K & L Gates LLP, Australia has just been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name Timbermate.com

The one member panel of Tony Willoughby gives an excellent recap of UDRP decisions where RDNH was found and the basis for finding RDNH.

Here are the relevant facts and findings by Mr. Willoughby:

The Complainant has owned its domain name timbermate.com.au since at least December 7, 1998.

The Domain Name was registered on May 14, 2003, when, according to the Complaint, the Respondent and his company Timbermate Inc. “were authorized and exclusive distributors of the Timbermate Products in the USA pursuant to an oral agreement with the Complainant.”.

This agreement was terminated by the Complainant in April 2011 and in or around June 2013 the Respondent used the Domain Name to resolve to a website promoting his new woodfiller product which he sells under the GOODFILLA name.

Following correspondence between the parties’ representatives the link to the Respondent’s website was removed. The Domain Name currently resolves to a parking page of the Registrar featuring pay-per-click links.

The Complainant asserts (and the Panel has no reason to doubt) that the Respondent registered the Domain Name in 2003 when he was the Complainant’s authorized exclusive distributor for the Complainant’s woodfilling products, but that that distributorship was terminated in 2011 and that the Respondent has subsequently used the Domain Name to resolve to another website of the Respondent promoting sales of the Respondent’s competing “Goodfilla” product.

On the face of it, it would appear to the Panel that the Respondent now has no rights or legitimate interests in respect of the Domain Name.

However, in light of the Panel’s finding under the next element of the Policy (D below) it is unnecessary for the Panel to come to a concluded view on this.

Nowhere in the Complaint does the Complainant assert that the Respondent registered the Domain Name in bad faith. Indeed, the Complaint makes it clear that the Respondent registered the Domain Name in 2003 while he was the Complainant’s United States exclusive distributor. Some eight or more years later following termination of the distributorship, the Respondent commenced a bad faith use linking it to a website selling his competing product. The Panel has no difficulty in finding that this subsequent use constitutes use in bad faith for the purposes of the Policy.

Accordingly, on the evidence of the Complainant, the Respondent registered the Domain Name in good faith and has subsequently used it in bad faith. Yet, despite the use of the conjunctive “and” in the heading to this section of the decision, which is taken from paragraph 4(a)(iii) of the Policy, the Complainant nonetheless contends that the Respondent registered and is using the Domain Name in bad faith.

The Complainant has failed to satisfy the Panel that the Domain Name was both registered and is being used in bad faith.

On the issue of Reverse Domain Name Hijacking the panel goes into an in-depth analysis of RDNH cases:

“”Is the fact that the Panel has found that the Respondent is using the Domain Name in bad faith a relevant factor? Can that fact counter-balance any bad faith intent behind the filing of the Complaint?

The Panel does not believe so.

Two wrongs do not make a right.

On the findings of the Panel the Complainant has brought a fundamentally misconceived Complaint.

It should never have been brought.

Paragraph 4(a)(iii) of the Policy calls for bad faith registration and use, yet there is no dispute that the Respondent’s registration of the Domain Name was in good faith.

Is the fact that the Complaint was fundamentally flawed of itself a basis for a finding of RDNH?

The Panel has reviewed a number of decisions where findings of RDNH have been made to see what the basis was for those findings. In most cases the finding has resulted from:

(i) materially false evidence: The Procter & Gamble Company v. Marchex Sales, Inc., WIPO Case No. D2012-2179:

“The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000.”

(ii) omission of relevant evidence G.A.Modefine S.A. v. A.R.Mani, WIPO Case No. D2001-0537:

“The Panel finds the failure of the Complainant in its Complaint to set out any of the clearly lengthy background to this dispute is surprising. The Complainant or entities associated with it have been pursuing the Respondent since 1995, through various representatives. The Panel is left with a strong sense that the reason these actions have led nowhere is because they come up against the same issue as has been identified in these proceedings, namely, the Respondent’s legitimate use of a variant of his own name. The Complaint states (at paragraph 20) in accordance with the Policy, that “the Complainant certifies that the information contained in the Complaint is to the best of the Complainant’s knowledge complete and accurate”. The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding.”

(iii) misrepresentation Coöperative Univé U.A. v. Ashantiplc Ltd/ c/0 Domain Privacy LLC, WIPO Case No. D2011-0636:

“The Complainant failed to provide any argument or evidence which could support its Complaint and its attempt to mislead the Panel and/or its willful recklessness in making incorrect factual allegations is a clear demonstration of bad faith.”

(iv) no trade mark rights at date of registration of the domain name M Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941, a decision of this Panel:

“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.”

(v) ulterior purpose Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555;

“Second, given the circumstances of this case, especially the dearth of evidence supporting the Complaint, it is difficult to avoid an inference that the Complaint was filed at least in part not to obtain the disputed domain name but rather to increase negotiating leverage in the settlement discussions, “a highly improper purpose.” Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.”

(vi) complainant knew that complaint was doomed to failure Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403, a decision in which this Panel participated:

“Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith.”

(vii) constructive knowledge IUNO Advokatpartnerselskab v. Angela Croom WIPO Case No. D2011-0806, another decision of this Panel:

“The Complaint is undoubtedly fundamentally flawed, but was it brought in bad faith to attempt to deprive the Respondent of the Domain Name or to harass the Respondent (paragraph 15(e) of the Rules)?

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. Occasionally, such complaints stem from an ignorance of the UDRP case law and the resources available on the Center’s website. In this case, however, the Complainant cites from the case law and relies on a passage (albeit an incomplete passage) from the WIPO Overview (see the reference to Mowitania Wendt & Molitor GbR v. Eric Clermont, supra.

However, the Panel does not feel the need to come to a concluded view on whether the Complainant’s intentions in launching this Complaint were abusive. In the view of this Panel a complainant in the position of the Complainant:

(a) ought to have been aware of the fundamental defects in the Complaint; and

(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.

Whether or not the Complainant’s motives were abusive, objectively speaking the end-result (i.e., the Complaint) was fundamentally flawed. In the view of this Panel, a represented complainant (and particularly a complainant in the position of this Complainant, a law firm) should be taken to have known and understood the Policy and should be taken to have known and desired the natural and probable consequences of its actions.”

If the objective test as set out in the above quote from the IUNO decision is correct, this case is clearly a case of RDNH.

The Complainant is legally represented and all along the Complainant has known that the Domain Name was registered in good faith.

On that basis the Complainant, a represented complainant, should be taken to have known and understood the Policy and nonetheless pursued a complaint doomed to failure.

However, in assessing bad faith for the purposes of paragraph 4(a)(iii) this Panel has generally stood out against deemed or constructive bad faith and has preferred the line taken by the panel in WALA-Heilmittel GmbH v. Canada Jumeira / Contact Privacy Inc., WIPO Case No. D2013-0782:

“In the Panel’s view, the question for the Panel in this case is not whether the Respondent “could” or “should” have known of the Complainant’s trade mark but rather whether, on the balance of probabilities, it is likely that the Respondent WAS IN FACT AWARE of the Complainant’s trade mark on registration of the disputed domain name”

There seems to the Panel to be no reason to adopt a different standard when assessing bad faith for the purposes of paragraph 15(e) of the Rules and, on reflection, the Panel concludes that while there may be cases as extreme as the factual background to the IUNO case meriting an objective analysis, in most cases actual knowledge (which may be inferred from the surrounding circumstances) is to be preferred.

Adopting that approach here, the Panel is required to choose between abuse and incompetence. In the end, the Panel concludes that when the Complaint was filed the Complainant (through its representative) knew that the Policy called for the conjunctive requirement and knew therefore that the Complainant was doomed to failure.

In citing two WIPO cases in support of its argument in relation to privacy services, the Complainant demonstrated an ability to research previous WIPO decisions. Moreover, the “Registered and Used in Bad Faith” section of the first of those decisions (Compagnie Gervais Danone v. Transure Enterprise Ltd / Privacy WIPO Case No. D2009-1019) commenced: “The significance of the conjunctive requirements of registration and use in bad faith is that the Complainant must prove use in bad faith as well as registration in bad faith: Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.” That same section in the second of those two cases (Saxo Bank A/S v. Domains by Proxy, Inc. / Forexmedia LTD WIPO Case No. D2011-0018) included the following: “The Complainant must prove both bad faith registration and bad faith use to make out this ground: see the summary of the recent WIPO UDRP jurisprudence in this area in Yeshiva University v SS Media, Joy Dhivakar S Singh, WIPO Case No. D2010-1588.”

Accordingly, the Complainant (through its representative) was only too well aware of the conjunctive requirement and instead of citing any previous decisions on the topic under the Policy elected to cite an Irish decision, Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003, a case under the IEDR Policy, which does not incorporate the conjunctive requirement.

The Panel finds that “the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeeding”.

The fact that the Domain Name is identical to the Complainant’s trademark and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is making bad faith use of the Domain Name does not alter the fact that under the Policy the Complaint was doomed to failure and the Complainant (through its representative) knew it.