In what be the first case, an Examiner found a “Complaint filed under the Uniform Rapid Suspension (URS) proceeding was brought as abuse of the administrative proceeding or with material falsehoods”.
The URS involved the generic domain name Grey.email and the Complainant Grey Global Group LLC of New York, New York, which was represented by Fross Zelnick Lehrman & Zissu, P.C. of New York, New York.
The panel found that the Complainant, “failed to establish the first element necessary to succeed on a UDRP claim: (actually a URS claim in this case) “that it owns trademark rights and that the Domain Name is identical to that trademark.”
“The American trademark GREY No 2469398 on which the complaint is based is in the name of the American company Grey Global Group Inc (Delaware Corporation), whereas the complaint is filed in the name of the American company Grey Global Group LLC.”
“There is no explanation on this difference.”
Therefore the Examiner finds that the Complainant has not present adequate evidence to substantiate its trademark rights in the domain name and rejects the Complaint”
The Examiner Ms. Marie Emmanuelle Haas, then went on to say she further finds the “Complaint was brought in an abuse of the administrative proceeding or with material falsehoods as explained above.”
Reverse Domain Name Hijacking rulings are not available in URS decision since even if the complainant won the URS they would not get the domain name, just to have it suspended for the remaining registration period. However it is when a Complaint under a UDRP is found to have been brought as an abuse of the administrative proceeding which gives rise to a Reverse Domain Name Hijacking finding.
steve brady says
If the complainant had a domain acquisition strategy based on competency and preparedness, they would have been the first to secure Grey.Group last month as well.
I am the registrant of grey.group . One of their attorneys,Todd Martin of Fross Zelnick Lehrman & Zissu, P.C sent me a nice cease & desist letter threatening to sue unless I handed over the domain.
I politely declined. He then made an offer of $350 to purchase the name.
You say “even if the complainant won he would not get the domain name.” I have trouble understanding how under legal process you can win a hijacking?
The whole terminology is weird. Why is it not enough to say the complainant did not make a good enough case to get the domain? A reverse hijacking implies some sort of bad faith but there is no sanction. It is no different if my case under UDRP is too weak to prevail or it is a reverse hijacking.
May I say that there was no abuse of the administrative procedure. Please read the final decision. Marie-Emmanuelle Haas
Someone was sloppy at the law firm.
Grey Advertising is a major global advertising agency and they have a couple TMs under “grey”.
I do not know if the TM referenced was filed incorrectly using an “inc” instead of “llc”.
Or, if the corporate structure evolved into the “llc”.
I am sure this one will be re-filed.
domain guy says
you are right more than “sloppy” LEGAL WORK, AT 300 AN HOUR THIS TM FIRM SHOULD BE FIRED AND ALL FEES RETURNED. WE ARE NOT HERE TO EDUCATE LEGAL PEOPLE.
I am sure your $300/hr price is low.
steve brady says
In addition to their 2 Registered Trademarks for “Grey Global Group” and “Greygroup”, both for advertising services, another Registered Trademark exists for “Grey Group” in the field of firearm safety and tactical training. Anybody is free to start a company and call it the Grey Company or the Grey Agency and go into the advertising business. Grey Global Group tm rights apply specifically and only to the terms “Gray Global Group” and “Greygroup”, not the word Grey.
Exactly the reason why Grey Global Group was just written up as an abuser of administrative policy, going after others using the word “grey ” in a domain name, when no Registered Trademark for the word “grey” exists in the US. Just because Grey Global Group owns grey.com, doesn’t mean they have trademark rights to the word “grey”, in fact if they were subject to their own abuse of the policy, any company with a Registered Trademark that included the word grey, would be able to UDRP grey.com away from the Grey Global Group.
How come Grey Global Group hasn’t registered Grey.Global yet? It is premium priced by the Registry at $3119. Are they waiting for someone else to pay for it so they can steal it? They can’t file a DPML block on it since they are not a TM holder of the word Grey, and their TM for “Grey Global Group” states they have no exclusive right to use the words “Global Group” apart from the entire string “Grey Global Group” .
I think I saw 4 or 5 TM’s they had registered ( in the U.S.) just for the word “grey”.
steve brady says
Now we’re in kind of a gray area…
Go to tmsearch.uspto.gov (TESS) Basic word mark search for “grey”. I see 50 records, none belonging to the complainant, none for the word “grey” alone.
Search again for “Grey Group” or “Grey Global Group” to find their 2 marks.
If I recall correctly, there were approx. 450 live TMs containing “grey”.
Did you go to page 2 (next list)? (50 per page)
steve brady says
You’re right my bad, please forgive me. There’s even one for GreyPoupon, dammit. Allow a correction here: For the record Grey Global Group does in fact possess several Live Registered US Trademarks for the word “Grey” in the field of advertising. Live TM Registrations for “Grey” also exist in the field of music, and in clothing/apparel. Don’t start an advertising business and call it Grey!
Grey Global Group, even with multiple trademarks for “Grey”, was found to have presented material falsehoods in their URS filing. That’s a huge embarrassment. They need to fire whoever bungled this up for them. They can’t fire me, I don’t work here.
Michael Berkens says
I would chat with one of the attorney’s that do a lot of UDRP work.
If you need a couple of recommendations send me an email