Pharmaceutical companies filing a lot of UDRP complaints

I was going through UDRP complaint fillings and noticed that a lot of pharmaceutical companies are quite active in filing complaints lately. There was always a company that was going stronger at one time or another but this time there are multiple pharmaceuticals filing 10s of UDRP complaints.

Sanofi has filed for more than 350 URDP complaints in the past 10 years. From sanofi.net in 2003 up until sanofiaventi.com in December 2013. Sanofi has won most of the complaints with the latest being sanofi-sun.com. Very few UDRP complaints from Sanofi has been denied including the complaint for the domain name sinofn.com. This was great decision that displays what a Panelist’s job includes: investigation and critical thought. Good job from Panelist Susanna H.S. Leong.

Pfizer Inc. has already won 2 UDRP complaints (for viagra-pfizer-france.com and for pfizerlegaldept.com/pfizerltd.com) in 2014, for a total of over 90 since 2000.

Hoffmann-La Roche Inc. has won 5 UDRP complaints in 2014 and has filed a total of more than 180 complaints since 2003. I am not sure why these 5 complaints (eg. for accutaneus.com) were not part of a single UDRP complaint since all domains are registered in the same registrar, all under privacy with no real name revealed, and all include the same circumstances and the same Roche trademark. Actually 4 out 5 were decided by the same Panelist.

Apple is going after misspellings of Apple.com with UDRP

Apple is going after misspellings of its official website Apple.com using UDRP complaints.

Apple, Inc filed 2 UDRP complaints for the domain names appke.com (k is next l in qwerty keyboards) and applw.com (w is next to e).

The domain name appke.com was registered in 2001 and is owned by a Hong Kong company and is parked at Sedo and offered for sale. The iphone related ads may hurt the case in UDRP.

The domain name applw.com was registered in 2000 and is owned by a person in California and is parked at Bodis and is also for sale. This domain also has apple related ads.

Apple is no stranger to UDRP having filled 31 complaints since 2008. Apple has won every case. They won a couple other misspellings such as aplle.com and appl.com. Also the complaints for the domains wwwapple.com and applle.com were terminated probably because the owner gave the domains to Apple.

First Ever UDRP Complaint Filed For a New gTLD Domain Name: Canyon.Bike

The first ever UDRP complaint for a New gTLD domain name was filed today, February 11th, at WIPO. The UDRP complaint with WIPO Case Number D2014-0206 was filed by Canyon Bicycles GmbH, a German bicycle company.

The domain name Canyon.Bike was registered on the 5th of February using a pre-registration order at Go Daddy for about $25. The domain is still behind whois privacy that will be removed shortly because of the dispute.

This was one of the fastest UDRP complaints I have ever seen. It took the German company less than 4 working days to file it. The fact that it is a slam-dunk case must have helped. Canyon Bicycles GmbH has a European Union trademark for the mark “Canyon” for bicycles. The mark “Canyon” was not registered in the Trademark Clearinghouse. One Trademark Registration costs $150 for 1 year.

Before this complaint, a complaint was also filed for ibm.guru and ibm.ventures but that was a URS complaint filed by IBM at the National Arbitration Forum (NAF) on the 6th of February. NAF is the sole URS provider for now. That was the first URS complaint filled for any New gTLD domain name.

But a UDRP complaint is different than a URS one. The complaint, if successful, will result in a transfer of the domain name to the complainant.

Through the URS Procedure ICANN offers a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. The URS filling fee at the National Arbitration Forum is $375 for up to 14 domain names. The URS can only lead to suspension of the domain names. The URS will not provide the transfer of the disputed domain name to the trademark holder. If the trademark owner wants to take ownership of and use the disputed domain, it should instead file a UDRP complaint or other legal action.

So complainant Canyon Bicycles GmbH chose the UDRP complaint that costs $1500 to file so that it will take ownership of the disputed domain name.

UDRP for Gooru.com denied but no RDNH – Owner declined selling domain registered 13 years before trademark

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

The UDRP complaint for the domain names gooru.biz, gooru.com, gooru.net and gooru.org was denied but Panelist *Gabriela Kennedy* didn’t make a Reverse Domain Name Hijacking finding and gave no explanation about her decision.

She only said:
“The Panel, on the balance, finds that the Complaint was not made in bad faith as an attempt at Reverse Domain Name Hijacking.”

The “on the balance” part was her full discussion as to why this wasn’t a Reverse Domain Name Hijacking. And that was clearly a contradiction of what she said earlier on the discussion of the 2nd element of the UDRP.

The Complainant is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name <goorulearning.org>, for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant’s Website”). The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.

The Respondent is based in Italy. The Disputed Domain Names were registered as follows: <gooru.com> on December 9, 1999 and <gooru.biz>, <gooru.net> and <gooru.org> respectively on February 21, 2003. The Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that includes sponsored links, and <gooru.com> and <gooru.net> are currently inactive and resolve to a website that states that the site is under construction.

This is what the Panelist said:
“In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant. The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit. Contrary to this, the email correspondence provided by the Complainant shows that the Respondent had no desire to enter such negotiations. The Panel finds that this further supports the Respondent’s contention that he is making preparations to use the Disputed Domain Names for a bona fide offering of services, rather than to misleadingly divert consumers for commercial gain.

Lastly, the Panel notes that the Complainant first approached the Respondent in January 18, 2011, around the time that the Complainant was first established; over a year before it registered its trade mark GOORU in the United States of America, and 12 years after the first Disputed Domain Name was registered. The Complainant had therefore been aware of and knew that the Respondent was unwilling to transfer the Disputed Domain Names, and intended to use the Disputed Domain Names for its own business purposes, before the Complainant registered and began using the GOORU mark.

For the foregoing reasons, the Complaint was denied but Gabriela Kennedy refused the Reverse Domain Name Hijacking finding.

This was a clear cut Reverse Domain Name Hijacking attempt but Panelist Gabriela Kennedy has never made a RDNH finding and she is not about to start now. More on this on another post.

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

Aged domain names: a change in ownership is considered as a new registration in UDRP

There are a lot of people that buy aged domain names. By aged I mean domains that have an old registration date. You can buy these domains either directly from the previous owner or in expiring domain name auctions. Although you can buy some pretty good keyword domain names there is no UDRP advantage in buying these aged domains if a trademark already exists before you acquire them. A change in domain name ownership is considered as a new registration as far as UDRP is concerned. If a trademark was registered between the initial registration and your acquisition date then the domain name is not treated a being registered before the trademark registration in a potential UDRP. Only the previous owner could have used this as a UDRP argument. Of course there are other aspects to a UDRP that most a mentioned below. Just remember that every UDRP case is different.

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) may not be a law, as it’s name suggests. It is a policy. But nevertheless it is governed by a set or rules, it is not merely dependened on prior decisions. Complainants, Respondents and Panelists use past decisions to support their arguments but there are usually decisions that support both sides of an argument. There is no precedent in UDRP.

Of course on most of these issues, consensus or clear majority views have developed. For example the WIPO Arbitration and Mediation Center has produced its informal overview of panel positions on key procedural and substantial issues. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″) was published in 2011.

That being said there is one rule in UDRP that has not been questioned by any Panelist and/or any serious Respondent: “A change in ownership is considered as a new registration as far as UDRP is concerned.”

This is clearly mentioned in 3.7 Question of the WIPO Overview:
While the transfer of a domain name to a third party does amount to a new registration, [...].”

This rule is only relevant when trying to prove or not the 3rd element of the UDRP and specifically if the Respondent registered a domain name in bad faith. This is only half of the 3rd element of the UDRP. (“the domain name has been registered and is being used in bad faith”)

If the registration date or the date of acquisition (whichever comes later) of a domain name is prior to the date of the trademark registration then it is clear that the domain was not registered in bad faith.

This rule does not work the other way around. It does NOT mean that if a registration or acquisition date postdates a trademark then the registration was done in bad faith. In this case other factors are then taken into account such as the location of the Respondent as related to the trademark registration region etc. And again this only relates to the first half of the 3rd element of the UDRP.

So if the registration of a domain name predates the date of a trademark registration then the UDRP complaint should be denied without going into much consideration of the other parts of the UDRP policy. And if many such cases reverse domain name hijacking (RDNH) has been found.

The only exception to the rule above is if you transfer the domain to maybe some other member of your immediate family (or in a case of death) or if a company changes names or is acquired as a whole by another company etc.

I also have to point that if a domain name is transferred to a new owner with a preexisting business and/or trademark then this case is generally not treated as an individual domain name transfer would.

So there is no UDRP advantage in buying aged domains if a trademark already exists. This is something that all registrants should be aware of. Of course as I always say the most important argument you can have in order to defend a domain name in a UDRP is usage. Use the domain name avoiding any new or old trademarks and you will be mostly safe.

I wrote this post because there is some wrong notion that this rule “While the transfer of a domain name to a third party does amount to a new registration, [...].” is adopted by a small percentage of panelists. No, this is a rule followed by everybody involved in the UDRP process and has nothing to with legitimate use or bad faith usage. These are examined separately.

Finally, I have to say that I thought of providing some links to decisions that have followed this rule but I saw no point in that as I was not able to find a single case advocating the opposite. If anyone wants a few links just leave a comment.

Azzaro perfumes wins 14-year-old domain Azzaro.com after refilling a 13 year old UDRP complaint

Loris Azzaro BV of Apeldoorn, Netherlands that produces the popular Azzaro perfumes just won a UDRP complaint (D2013-1780) for the 14 year old domain Azzaro.com. The interesting part is that this UDRP complaint was a refiling of a previous complaint, the decision of which is recorded in Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos, WIPO Case No. D2000-0608. The complaint was denied in the 2000 case.

The Respondent was in both complaints Mr. Vasconcellos of Rio de Janeiro, Brazil and in both complaints he did not file a response.The Panelist John Swinson noted that “This does not automatically result in a decision in favor of the Complainant (see e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454). However, the Panel may draw appropriate inferences from the Respondent’s default.”

Mr. Vasconcellos seems to have some sort with affiliation with “LINECOM Trading Co., Ltd’s Internet Team” and dreamwiz.com.

Another interesting fact is that the domain Azzaro.com has been expired since September.

In a decision dated September 4, 2000, the prior panel denied the complaint on the basis that there was not sufficient evidence before the prior panel in relation to bad faith use or registration. At the time of the prior complaint, the Disputed Domain Name resolved to a website that was “under construction”. It now contains links to various websites that advertise and sell perfumes and cosmetics.

“A “refiled complaint” is “a complaint respecting a domain name that was the subject of a previous UDRP complaint involving the same complainant and respondent who are involved in the subsequently filed complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 and cases cited therein). Previous UDRP panels have held that a refiled complaint may only be allowed in “exceptional circumstances” (see, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). Panels have drawn a distinction between refiled complaints relating to (a) acts forming the basis of the original complaint and (b) acts occurring after to the decision on the original complaint. Here, the Complaint falls within the latter category. The Complainant argues that the Complaint should be accepted based on the change in the content of the Respondent’s website, and the steps the Respondent took to “cover his identity”.

The principles to apply when determining whether to accept a refiled complaint are outlined in The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757. They are as follows:

(i) the burden of establishing whether the refiled complaint should be accepted rests on the refiling complainant;

(ii) the refiling complainant’s burden is high; and

(iii) the grounds that allegedly justify acceptance of the refiled complaint should be clearly identified by the refiling complainant.

Where the refiled complaint concerns acts occurring after the original complaint and decision, the complainant must prove that the “refiled complaint constitutes a ‘new truly action’ under the Policy, and not just an application for readjudication of the previous complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757). Accordingly, the Complainant must independently prove all the elements of paragraph 4(a) of the Policy.

In this case, the new facts and circumstances outlined in the Complaint are relevant to the issue of the Respondent’s bad faith use of the Disputed Domain Name. As such, the Panel finds that the Complaint can be considered a “truly new action”. Moreover, a significant period of time has elapsed since the original complaint was filed, and the Respondent has made no submissions that this Complaint should not be considered accepted, and these are also factors that this Panel considers to be relevant to this issue. In view of the above, the Panel accepts the Complaint.”

In the discussion the Panelist said that “The Respondent had the opportunity to demonstrate its rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.”

“Paragraph 4(b)(iv) of the Policy states that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) is sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.

The website operated by the Respondent at the Disputed Domain Name displays “click-through” links to websites selling the goods of the Complainant’s competitors. The Panel infers that some Internet users, once at the Respondent’s website will follow the provided links and “click-through” to these websites. The Respondent will earn “click-through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see, e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020 and cases cited therein).

Additionally, the Panel infers that by changing his details to simply state “Personal” the Respondent is attempting to conceal his identity. This is further evidence of bad faith.

The Respondent had the opportunity to provide evidence of good faith use of the Disputed Domain Name but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any such evidence (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and cases cited therein).

In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b)(iv) of the Policy.”

“For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <azzaro.com> be transferred to the Complainant.”

JenniferAniston.com returned to Jennifer Aniston’s PR company after almost a year


The domain name JenniferAniston.com was returned toJennifer Aniston’s PR company PMK-HBH after being in a “Pending Renewal or Deletion” state for almost a year.

The domain name, registered with Network Solutions, expired in July 2012 while owned by PMK-HBH Public Relations, a PRcompany based in Beverly Hills. The domain then entered an auction at Namejet on the 13th of August 2012 and it had 106 bidders. The auction was supposed to end on the 16th but it was canceled by Namejet before that. Auction had a message that read: “We’re sorry, this auction was cancelled.”

Probably a C&D letter was send by Jennifer Aniston’s PRcompany to Network Solutions and/or Namejet that forced them to remove the domain name from auction.

The domain had a “CLIENT HOLD” status at Network Solutions with registrant info as “Pending Renewal or Deletion” up until the 15th of May 2013. Almost a year after it expired.

The actress Jennifer Aniston, who’s father is Greek, owns the domain names jennifer-aniston.com andjennifer-aniston.net although both are inactive.

Wayback Machine shows that the domain JenniferAniston.com has never been developed by this PRcompany, but about 10 years ago it displayed a coming soon message for the Official Jennifer Aniston website:

To be notified of the official launch and new updates, be sure to fill out the form completely. We use the information provided to ensure that the site which we launch provides content which the majority of the users are satisfied with. Thanks for taking the time and visiting the official Jennifer Aniston website!

For a leading PR company, PMK-HBH is not doing such a great job by not developing the website for more than 10 years, letting the domain name expire and enter an auction, and then waiting almost a year before getting the domain name back.

The domain name still has the NS1.PENDINGRENEWALDELETION.COM and NS2.PENDINGRENEWALDELETION.COM nameservers and resolve to the default Network Solutions lander for expired domains. It still displays the message “jenniferaniston.com expired on 07/08/2012 and is pending renewal or deletion” and it is still making money for Network Solutions.

A few weeks back the domain name PamAnderson.com dropped and was caught by Namejet as reported by Michael Berkens. This auction was also cancelled and the domain was returned to Pamela Anderson’s representatives CMG Worldwide, Inc.

RonPaul.com and RonPaul.org UDRP complaints denied at WIPO

Both UDRP complaints for the domain names RonPaul.com and RonPaul.org were denied today at the WIPO. The full decisions have not been published yet. More details on a post when the decisions are available to the public.

Ron Paul split the original UDRP complaint for the domains RonPaul.com and RonPaul.org into 2 separate complaints, one for each domain name.

Ron Paul originally filed a cybersquatting UDRP complaint at the World Intellectual Property Organization (WIPO). The original complaint with case number D2013-0278 was filed for two domain names RonPaul.com and RonPaul.org but now only has RonPaul.com in it. One of the two domains in the complaint had to be removed because the 2 domains are owned by different entities. UDRP complaints can’t be filed against more than one respondents.

The 2 domain names are owned by 2 different companies that are both based in Panama.

WIPO stats for Q1 2013: UDRP complaints down, average number of domains per case up, .com domains 62% of cases

I checked the WIPO stats for the 1st quarter of 2013 and found that UDRP complaints have slowed down while the average number of domain names per case has increased.

Usually the first 2 quartes of the year have the most UDRP complaints filed but Q1 2013 had the lowest number of complaints of all 2012 quarters.

2012 2013
Q1 763 651
Q2 762
Q3 658
Q4 701

2013 started with a lot of complaints but it gradually ended up to one of the lowest numbers for March ever.

2012 2013
January 192 251
February 271 216
March 300 184

The average number of domain names per case has gone up significantly reaching more than 3 domain names per case in 2013:

Year Average Number of Domain Names per Case
1999 1.00
2000 2.02
2001 1.58
2002 1.69
2003 1.61
2004 2.21
2005 2.27
2006 1.54
2007 1.64
2008 1.70
2009 2.22
2010 1.62
2011 1.73
2012 1.76
2013 3.06

In 2012 75% of the domains were .com while in 2013 the number has dropped to 62%. .Net, .org and .info have seen great increase:

2013
.com    1417    61.64%
.net    327    14.22%
.org    269    11.70%
.info    228    9.92%

2012
.com    3475    74.84%
.net    487    10.49%
.org    322    6.94%
.info    264    5.69%

There has not been a single .xxx UDRP complaint in WIPO in 2013 after 16 complaints in 2012.

In ccTLDs .nl lost first place to .co and that shows the growing popularity of the .co.

2013
ccTLDs    Number of Domain Names
.co    21
.nl    20
.es    15
.au    13
.mx    11

2012
ccTLDs    Number of Domain Names
.nl    103
.au    55
.es    53
.ch    53
.co    47

While the percentage of the denied complaints is pretty much stable, the percentage of cancelled domains has decreased even more:

2013
Outcome Number of Cases Percentage
Cancellation 2 0.88%
Transfer 206 90.35%
Complaint denied 20 8.77%
2012
Outcome Number of Cases Percentage
Cancellation 64 2.84%
Transfer 1985 88.07%
Complaint denied 205 9.09%

The WIPO Arbitration and Mediation Center published its 2012 review on “Internet Domain Name Dispute Resolution”. In 2012, trademark holders filed a record 2,884 cybersquatting cases covering 5,084 Internet domain names with the WIPO Center under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This represents an increase of 4.5% over the record established in 2011.

Avaya Inc. found guilty of Reverse Domain Name Hijacking and harassing the domain name owner

Avaya Inc., a multinational company with over 17,500 employees worldwide, was found guilty of Reverse Domain Name Hijacking by a 3-member Panel at the National Arbitration Forum. I represented the Respondent, Avayo Electronics, in these proceedings.

Avaya Inc. tried to steal the domain name avayo.net (notice the spelling) from its rightful owners for the past 8 years Avayo Electronics from Canada. The Complainant, Avaya Inc., was represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. 

The Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Avaya Inc. had another 2 complaints denied in the past again for domains that were used in good faith by its owners for many years. (see below)

The Respondent, Avayo Electronics, is a business whose name corresponds to the disputed domain name. That business is a legitimate business which does not compete directly with the Complainant, Avaya Inc. When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant. When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.

Avayo Electronics provided evidence to prove, that it has been commonly known by the disputed domain name for eight years. That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark. The Complainant did NOT contest this. On the contrary, the Complainant admitted that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products. Thus the Panel found that the Respondent  adequately shown that it is commonly known as “AVAYO” in its business name.

The Panel found that it was clear from the record that the Complainant knew that the Respondent was engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserted that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

The Panel then went on to say: “As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities. The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012). “

Consequently, the Panel found that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

The 3 member Panel cites a lot of very interesting cases in its decision that can be used in other Reverse Domain Name Hijacking cases. Here are all the details of the decision FA1302001487607:

Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco and The Honourable Neil Anthony Brown QC as Panelists, Richard Hill as Presiding Panelist.

The Reverse Domain Name Hijacking ruling was coming even from the “Findings” section of the decision where the Panel said:
“The Respondent is a business whose name corresponds to the disputed domain name.  That business is a legitimate business which does not compete directly with the Complainant.

When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant.  When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.”

Identical and/or Confusingly Similar

For the reasons set forth below, the Panel holds that it need not analyse this element of the Policy.

Rights or Legitimate Interests

The Respondent contends, and provides evidence to prove, that it has been commonly known by the disputed domain name for eight years.  That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark.  The Complainant does not contest this.  On the contrary, the Complainant admits that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products.  Thus the Panel holds that the Respondent has adequately shown that it is commonly known as “AVAYO” in its business name.

[...]

Since the Respondent prevails regarding this element of the Policy, the Panel need not consider the other elements of the Policy.

Registration and Use in Bad Faith

As already noted, the element analysed above is dispositive, [...] Nevertheless, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):

Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.

These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business.  When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name.  However, the Complainant could not have ignored this after the Response was filed.

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities.  The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services.  And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012).

Consequently, the Panel finds that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

DECISION

Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <avayo.net> domain name REMAIN WITH Respondent.

The Panel finds that the Complainant has attempted to engage in Reverse Domain Name Hijacking.