Citybankonline.com Guilty Of Reverse Domain Name Hijacking

CITY BANK (not CitiBank) whose site is CityBankOnline.com and CityBankTexas.com, represented by Kristi Dent of Cox Smith Matthews Incorporated, Texas, USA was just found guilty of Reverse Domain Name Hijacking (RDNH). The domain in question was CityBank.com.

The three member panel UDRP panel of Fernando Triana, Esq, James A. Carmodym, and Dennis A. Foster, Esq said on the issue of RDNH:

“”In the present case, the disputed domain name was registered in 1995, with a business model based on pay-per-click advertisement. Complainant registered its domain names in 1998 and 1999, which means that at least on those dates Complainant should have known that the disputed domain name was not available and neglected to proceed against it, until 2014, which is 15 years after Complainant should have known of the existence of a conflict.

Furthermore, Complainant did not provide any evidence as to prove its trademark rights regarding the expression CITY BANK and tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent offered to sell the disputed domain name for over USD $180,000, when from the exchanged emails it is obvious that Respondent was not offering the disputed domain name but responding to an offer from Complainant, and simply informed Complainant that a third party had offered to pay for the disputed domain name USD $180,000, and that in fact Respondent refrained itself from selling it.

Finally, Complainant’s long delay in bringing this action is another factor supporting a finding of its bad faith.

The fact that Complainant filed this proceeding nearly 15 years after Complainant should have known of the existence of the disputed domain name and over 18 years after the disputed domain name registration, suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith.””

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.””