The Asian Domain Name Dispute Resolution Centre (Kuala Lumpur Office) has returned what we believe is that providers first Reverse Domain Name Hijacking ruling on the domain name AsiaCharts.com, and its on the exact type of case that we have been complaining about, one in which the complainant did not have a trademark.
Even worse the domain name was registered 4 years before the Complainant was even formed.
The three member Panel of Mr.D.Saravanan, Mr.Michael Soo and Honorable Neil Brown QC found that ASIA Charts Pte. Ltd., of Singapore, having an address at 111, North Bridge Road, # 13-04, Peninsula Plaza, Singapore 179098, represented by its Lim Chee Leong was guilty of Reverse Domain Hijacking.
The domain holder Neuronet Systems Pte. Ltd., was represented by ESQwire.com, P.C., Ari Goldberger and Jason Schaeffer.
The opinion has some of the best and strongest Reverse Domain Name Hijacking language that we have ever read, which is why we titled our post the way we did.
Great job by the team at ESQwire.com and the three member panel who took a lot of time to issue a very lengthy opinion that you should all read
The domain name asiacharts.com was registered in 2002.
The Complaintant was first incorporated in June 1, 2006.
Here are the relevant facts and findings by the three member panel”
Respondent’s predecessor, Neuronet Systems was incorporated in Singapore on October 13, 1997 as a sole-proprietorship and superseded by Neuronet Systems Pte Ltd. on 31st May 2004.
Since 1997 Respondent has provided “end-of-Day” data services (“EOD Services”) to end users and companies worldwide. Since May, 1999 Respondent has operated online at , and continues to be a bona fide provider of data and charting to the present.
Respondent registered the domain name on April 9, 2002 and has continually maintained ownership until the present.
Between 2002 and 2006 Respondent used the Disputed Domain name in connection with Neuronet Systems to promote its “end-of-day” data services.
Complainant was formed on June 1st, 2006.
In June, 2006 Complainant approached Respondent with an interest in using the Disputed Domain.
One of the Complainant’s founders, Benny Yeo entered into an agreement where Respondent would be the exclusive EOD Services Provider to Complainant. In exchange for access to the Domain, Complainant agreed to allow Respondent to be its exclusive EOD Services provider and the parties used the Disputed Domain to promote their mutual business interests.
During the parties’ agreement, Respondent also passed through the nine (9) year registration cost of $73.13, which was paid by Complainant.
Between June 1, 2006 and November 15, 2013, the parties worked together with Complainant honoring its deal to utilize Respondent as the exclusive EOD provider of market data and Respondent pointing the DNS as instructed by Complainant.
Complainant’s last request for a DNS change was made of December 18, 2013.
On or around November 15, 2013, Benny Yeo left Complainant, and as a result of failed negotiations Complainant announced they would no longer be using Respondent as the exclusive EOD provider.
After Complainant announced its change in status, between December 2013 and February 2014, the parties exchanged correspondence regarding a potential change in service terms. Complainant finally ceased using Respondent as its EOD Services provider.
On 4 Nov, 2013 Respondent advised Complainant that it was in breach of the agreement and received a negative reply.
On 1 Jun, 2014, after Complainant failed to remedy its breach of the agreement, Respondent repointed the URL to neuronetsys.com.
At no time did Respondent agree to sell the Disputed Domain to Complainant, and Complainant did not offer to purchase the Disputed Domain from Respondent.
At no time did Complainant ever have any ownership of the Disputed Domain. Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the Disputed Domain.
Complainant did not exist and its trademark did not exist when Respondent registered the Disputed Domain in 2002.
Indeed, Complainant was not formed until four (4) years after Respondent registered and began using the Disputed Domain.
At all times Respondent has used and will continue to use the Disputed Domain in good faith and in connection with its common descriptive meaning.
The Complainant has no enforceable rights to a Trademark identical or confusingly similar to the Disputed Domain:
(Complainant’s purported rights rest on its corporate formation documents, a logo design that incorporates the words “Asia Charts,” and a breached “limited lease agreement” between the parties wherein Respondent pointed the DNS to Complainant while the parties worked together using Respondent as the exclusive EOD Services Provider.
Complainant does not hold a registered Trademark and its purported trademark rights in a generic or descriptive term is tenuous at best.
Accordingly, there is simply no evidence that Complainant has any rights to satisfy this Prong of the Policy. Therefore, Complainant’s must fail.
Respondent’s registration and use of a common word Domain establishes Respondent’s rights and a legitimate interest in the disputed Domain Name:
The registration of domain names, like AsiaCharts.com, that incorporate common descriptive dictionary words, subject to third party use, ipso facto establishes the Respondent’s legitimate interest, provided there is no evidence the respondent targeted the complainant’s trademark.
Indeed, it is settled that the registration of domain names that contain common words are permissible on a first- come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind
The principle of “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark and there is simply no evidence here that would provide Complainant with superior rights to the Disputed Domain.
In the instant matter, there is no evidence that the Disputed Domain was registered with Complainant’s trademark in mind because of three (3) undisputed facts, inter-alia,
1)Complainant did not exist in 2002 when Respondent registered the disputed Domain
2)Complainant has never owned or had ownership rights to the disputed Domain;
3)Complainant holds no trademark for generic ASIA CHARTS.
Accordingly, there is no evidence that respondent targeted Complainant in any manner. To the contrary, it is simple implausible that respondent targeted Complainant rather than consciously decided to profit off of a combination of common words used in the English language.
Reverse Domain Name Hijacking
(a) There is absolutely no basis for this claim and Complainant should have known that before filing its Complaint.
It certainly had an obligation to understand the rules and present a valid claim.
Complainant and its counsel are sophisticated and certainly understand the importance of knowing the law and facts before proceeding.
The Complaint is woefully devoid of any facts or information.
Indeed, Complainant has not presented any trademark registration because none exists.
Under the first prong of the Policy, the Complainant cannot show trademark rights just because its corporate name includes “Asia Charts.”
Moreover, the fact that the parties once had an “agreement” to partner on the use of the disputed Domain and for Respondent to point the DNS in exchange for Complainant’s use of Respondent as the exclusive EOD Services provider hardly establishes Complainant’s “rights” to the disputed Domain.
Absent agreement to transfer ownership of the disputed Domain, there is simply no merit to this claim.
On the second two prongs of the Policy the Complainant is also completely devoid of merit on its face, and warrants a finding of reverse domain name hijacking to deter future claims and abuses of the system.
Complainant knew when it filed the Complaint that it could not prove at least 2, if not all 3 of the elements to prevail.
Complainant undoubtedly filed this UDRP to hijack the disputed Domain from its rightful owner and gain exclusive use of an inherently valuable common term and combination of two English words. Even a cursory review of the UDRP and UDRP decisions would have alerted Complainant that is case was devoid of merit. The fact that the Complaint shows no evidence of wrongdoing is itself proof of bad faith of Complainant in filing this action.
(Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’ … WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” Jvier Zetter Casillas v. Vertical Axis, Inc. D2014-0400 (WIPO Jun. 6, 2014). Under these circumstances, this is an abuse of the Policy and warrants a finding of reverse domain hijacking. See Planate Management Group LLC v. Vertical Axis, Inc. D2011-1535 (Dec. 6, 2011) (stating, [i]n the circumstances, the Complainant clearly knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy, i.e. bad faith registration); Vortal Group, Inc. v. Digital Transp., FA 222968 (NAF Mar. 9, 2004) (The claim for reverse domain name hijacking is granted, because filing a Complaint which one knows or should have known would fail based upon the admissions of Complainant can be interpreted as harassing per se and should be discouraged.’). The Realty Alliance v. Vertical Axis, Inc., No. 296997 (NAF Feb. 12, 2010), CNRV, Inc. v. Vertical Axis, Inc. No. 1300901 (NAF May 3, 2010) (“Complainant must have known it could not demonstrate bad faith registration and use”).
Complainant or its counsel should have known before it filed this case that the basic elements that must be proved were missing from this claim and it should not have been filed. Instead, an extremely valuable generic domain name that was originally registered in 2002 by respondent is subject to a dubious claim because the parties have ceased their relationship. This action placed respondent’s valuable asset at risk, required respondent to incur legal fees and is waste of the Panel and the Forum’s valuable resources.