Complainant did not assert rights during pre-action negotiations; Panel finds reverse domain name hijacking

In the case of Bryn Mawr Communications, LLC v. Linkz Internet Servicesa three-member WIPO Panel denied the Complainant’s efforts to have the domain name <eyetube.com> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests, and failed to show that the Respondent registered and used the domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking in pursuing the action.

The Complainant provides online educational resources related to ocular health and practice management for ophthalmologists, and claimed trademark rights in its registered EYETUBE mark, which if first used in commerce in February 2008. The Respondent registered the disputed domain name in December 2005, and used the disputed domain name to establish a parked page with sponsored advertising.

Rights or Legitimate Interests

The Panel found that the Complainant failed to show that the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent established its ongoing “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.”

The evidence indicated that the links on the disputed domain name were related to the domain’s generic meaning. The disputed domain name consisted of two generic words, “eye” and “tube,” that have meanings independent of any connection with the Complainant’s business, and that together form a generic phrase related to television programming. Respondent used the disputed domain name in association with these generic meanings. Although the disputed domain name consisted one link to an eyewear retailer, that link was only visible upon a user’s custom search. In any event, the Panel found that the Complainant failed to show how the eyewear retailer was related to Complainant’s provision of educational resources to ophthalmologists.

Bad Faith

The Panel found that the Registrant did not register the domain name in bad faith, because the Respondent registered the domain name prior to the time that the Complainant established any trademark rights in its mark comprising the disputed domain name. Moreover, in this case, the Registrant’s offer to sell the disputed domain name to the Complainant for more than $145,000 did not constitute bad faith.

Reverse Domain Name Hijacking

Under the circumstances of this case, the Panel found that Complainant engaged in reverse domain name hijacking. It found that the Complainant 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 UDRP. The following circumstances supported a finding of reverse domain name hijacking:

  • The Complainant acknowledged in the Complaint that the Respondent had registered the disputed domain name several years prior to the Complainant’s registration or use of its marks.
  • The Complainant must have known at the time that it registered its <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names that the <eyetube.com> domain name was being used by Respondent and might never be available to Complainant.
  • At least three individuals employed by the Complainant initiated communications with the Respondent’s broker regarding the purchase of the disputed domain name between May 2011 and July 2015, and at no time over the course of those four years did the Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind.
  • The Complainant filed its Complaint only after it failed to negotiate a sale of the disputed domain name.
  • The Complaint failed to make any mention of its pre-suit communications
  • The Complainant misleadingly indicated to the Panel that the disputed domain name contained an advertisement related to the Complainant’s business, when the advertisement at issue was generated through the Complainant’s own use of the disputed domain name’s search function and had no relation to the educational services offered by the Complainant.

For these reasons, the Panel found that the Complainant engaged in reverse domain name hijacking.

Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286 (March 29, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Panel slaps Complainant with reverse domain name hijacking even though Respondent did not ask for it

In the case of Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <racknstack.net> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, and failed to show that the Respondent registered and used the disputed domain name in bad faith. And the most interesting part of the case came at the end — where the Panel sua sponte determined that the Complainant had engaged in reverse domain name hijacking.

The Complainant and the Respondent are in the same line of business — selling shelving and other storage solutions — but are in different parts of Australia. They both each legitimately purchased separate “branches” of the same business from the original owner of the business.

The Panel found that the Complainant failed to make out a prima facie case on the second UDRP element (rights or legitimate interests). That the Complainant was successful in a trade mark opposition proceeding concerning a mark that was different from the disputed domain name did not demonstrate that, for the purposes of the UDRP, the Respondent had no rights to or legitimate interests in respect of the disputed domain name.

Further, the Respondent demonstrated to the satisfaction of the Panel that the Respondent has been operating a genuine business under its company name (corresponding to the domain name) for nearly seven years, since when he purchased the original owner’s south-east Queensland business. Moreover, even before that time, the Respondent had been operating a business under a similar name (which incorporated the term “Rack’nStack”), with permission from the original owner, in northern New South Wales. Finally, the Panel found that the Respondent had been commonly known by the disputed domain name for purposes of the UDRP.

Though its determination on the second UDRP element was sufficient to deny the complaint, the Panel went on to consider the third UDRP element — bad faith registration and use. The Panel observed that the the Respondent registered the disputed domain name for the purpose of operating a legitimate business, which it legitimately purchased from the original owner. Accordingly, the Respondent did not register the disputed domain name for the purpose of attracting the Complainant’s customers, or to cause customer confusion, but to attract its own customers and to reflect its company name. Any evidence of actual customer confusion because the Complainant and the Respondent were trading under similar names was not of itself determinative of bad faith registration or bad faith use of the disputed domain name.

Interestingly, even though the Complainant did not ask for such a finding, the Panel concluded that the Complainant had engaged in reverse domain name hijacking. It found that the Complainant had launched the proceedings primarily to harass the Respondent. The Panel did not take too kindly to the Complainant’s style — it particularly criticized the way that the Complainant had submitted a Complaint which was incomplete, that did not directly address the second element of the UDRP, and told a selective story in relation to the background to the dispute. In particular, the factual background and relationship between the parties was described only in an annex to the Complaint and was not otherwise referenced by the Complainant. These facts are of central relevance to the questions of whether the Respondent had rights or legitimate interests and whether the Respondent registered and used the disputed domain name in bad faith. The Panel expressed this dissatisfaction by its sua sponte finding of reverse domain name hijacking.

Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, WIPO Case No. D2016-0102 (March 16, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Reverse domain name hijacking found where Respondent’s registration of domain name preceded Complainant’s trademark rights by 14 years

In the case of Dreamlines GmbH v. Darshinee Naidu / World News Inc, a WIPO Panel denied the Complainant’s efforts to have the domain name <dreamlines.com> transferred because the Respondent did not register the disputed domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking by bringing the complaint.

The Complainant began providing international travel agency services in 2011, and claimed trademark rights in its registered mark DREAMLINES. The disputed domain name was registered in 1997, and the Respondent presented evidence that the domain name was reconfigured in 2014 to resolve to a page that features a wingsuit video.

The Panel found that the Complainant failed to satisfy the third UDRP element (bad faith registration and use) because its earliest registered trademark post-dated the creation date of the disputed domain name by some fourteen years. And the Complainant itself was not incorporated until more than a decade following registration of the disputed domain name. The disputed domain name in this case could not have been registered in bad faith in 1997 even if a recent change in use had given rise to use in bad faith so long as there was an unbroken chain of registration (and the Panel found that there was an unbroken chain).

On the issue of reverse domain name hijacking, The Panel was satisfied that the Complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed. It entered a finding of reverse domain name hijacking in addition to finding against the Respondent.

Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111 (March 8, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Pay-per-click links were enough to establish rights or legitimate interests in domain name

In the case of China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, the Complainant came up short in its quest to have the Panel transfer the disputed domain name <chinaready.com>. On the second UDRP element, the Panel found that the Complainant made a prima facie showing that the Respondent lacked rights or legitimate interests in the domain name. But the Respondent successfully met and overcame that prima facie case with evidence of its rights and legitimate interests.

Setting up pay-per-click links at a disputed domain name generally does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. But this case fit into a relatively narrow set of circumstances where pay-per-click links at the disputed domain name do establish those rights and interests.

The 3-member Panel considered that the disputed domain name consisted of the common phrase “China Ready” and the pay-per-click links came within at least a generally understood meaning of the phrase, i.e. “ready for China”. Considering this against the background of the Respondent’s apparent business in advertising and domain monetizing services for others using numerous domain names over the years, and that there was no evidence of the Respondent intentionally targeting the Complainant or its business in using the disputed domain name, the Panel concluded that the Respondent had rights or legitimate interests in the disputed domain name.

The Panel went on to find that the Respondent engaged in reverse domain name hijacking. Because the Respondent registered the domain name before the Complainant established its trademark rights, in this case the Complainant “could never have prevailed.” The Panel found the complaint was brought in bad faith and was an abuse of the proceeding.

China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, WIPO Case No. D2015-2164