Afternoon Folks!!
In the highest profile Reverse Domain Name Hijacking case in History, DomainNameWire is reporting that Procter and Gamble has been found GUILTY of Reverse Domain Name hijacking Swash.com! They join the list below that will be displayed each and every time one of these cases comes out.
Procter and Gamble and their Attorney got their asses WHOPPED as you will read in RED below direct from the panel in what is on of THE single most stinging decisions I have ever read.
Here is the panels SPANKING of Procter and Gamble and their Attorney!
7. Reverse Domain Name Hijacking
page 8
The Respondent has requested that the Panel issue a finding of abuse of this UDRP proceeding or “reverse domain name hijacking” per the UDRP Rules at paragraph 15(e). The Panel notes that panels do not usually issue such a finding in a case where a complainant has prevailed with respect to two (in the present case not unanimously) of the three elements required under the Policy. See, for example, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“Inasmuch as the Panel has found that the Complainant has incontestable rights in its HISTORIC HOTELS OF AMERICA mark, and that the disputed domain name is confusingly similar to that mark, the Panel finds the Respondent’s claim of reverse domain name hijacking unpersuasive.”); Globosat Programadora Ltda. v. J. Almeida, WIPO Case No. D2005-0199; and Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., WIPO Case No. D2000-0174.
However, the Panel does not believe that the present Case represents a normal circumstance. The Panel notes that the Complainant, The Procter & Gamble Company, is a premier marketer and advertiser of consumer products in the United States of America and in many other countries. It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.
The Complainant and its legal counsel are not strangers to the UDRP process. See, P&G Prestige Products, Inc. v. Ryogo Sugai, WIPO Case No. D2009-1098; The Procter & Gamble Company v. Richard Jones, NAF Claim No. 1266787; The Procter & Gamble Company v. William Vaughan, River Cruise Investments Ltd., WIPO Case No. D2008-1164; The Procter & Gamble Company, P&G Hair Care, LLC v. Domain Admin, WIPO Case No. D2007-1040; Procter & Gamble Pharmaceuticals, Inc. v. Johnny Carpela, NAF Claim No. 625591; The Procter & Gamble Company v. Hong Gil Dong, NAF Claim No. 572962; et cetera. Therefore, the Panel (by a majority) concludes that the Complainant must have known that, once the relevant facts of this case were uncovered, a UDRP panel could not possibly find that the disputed domain name was registered in bad faith. To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner. See, Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 (“The Panel considers that the Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed where the Respondent’s domain name had been registered three years prior to filing a trademark application or actual use of the mark.”); and carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 (“In the Panel’s view a finding of reverse domain name hijacking is warranted if 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 Policy.”)
The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled underUSD 60,000.
Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.
In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.
page 9
For completeness, the Panel acknowledges the Respondent’s contention as to the Complainant’s true motivation behind this administrative proceeding (see paragraph 5D above), but does not regard it as necessary or appropriate that it should address the point.
8. Decision
For the foregoing reasons, the Complaint is denied. The Panel also makes a finding of reverse domain name hijacking against the Complainant.
I have 29 30 34 such cases so far and each win will discourage the next would-be hijacker. A tip of the hat to all owners below that fought and a big congrats to the attorney that represented them! I will list any and all cases as I learn of them.
And a special tip of the hat to John Berryhill who is the leading RDNH attorney in the world. I am counting and will post how many wins he has recorded on behalf of his clients.
SaveMe.com The Grand daddy of RDNH. Here is my post on this very big win against Márcio Mello Chaves, aka Márcio Chaves aka Marcio Chaves.
The Complainant is G.W.H.C. - Serviços Online Ltda., E-Commerce Media Group Informação e Tecnologia Ltda. of Sao Paulo, Brazil, represented by Almeida Advogados, Brazil. Found guilty of Reverse Domain Name Hijacking
Case #1 is our Friend Scott Day of Digimedia who won a $100k+ judgment against GOFORIT ENTERTAINMENT, LLC who IS a REVERSE DOMAIN NAME HIJACKER.
Case #2 Rain.com Media Rain LLC engaged in Reverse Domain Hijacking
Case #3 CinemaCity.com The Complainant is Prime Pictures LLC of Dubai, United Arab Emirates (“UAE”), represented by Law offices of Vince Ravine, PC, United States of America (“USA”). Reverse Domain Name Hijacker
Case #4 CollectiveMedia.com The Complainant is Collective Media, Inc., New York, United States of America, represented by Lowenstein Sandler PC, United States of America is a Reverse Domain Name Hijacker
Case #5 Elk.com The Complainant is ELK Accesories Pty Ltd. of Preston, Australia represented by Pointon Partners, Australia is a Reverse Domain Name Hijacker
Case #6 ForSale.ca Globe Media International Corporation is a Reverse Domain Name Hijacker
Case #7 Mess.com Kiwi Shoe Polish Company, The Complainant is Mess Enterprises, San Francisco, California, of United States of America, represented by Steve Clinton, United States of America is a Reverse Domain Name Hijacker
Case #8 Goldline.com The Complainant is Goldline International, Inc., represented by Spataro & Associates is a Reverse Domain Name Hijacker
Case #9 K2R.com The complainant is a Swiss company, K2r Produkte AG of Haggenstrasse45, CH 9014 St. Gallen, Switzerland is a Reverse Domain Name Hijacker
Case #10 CarSales.com The Complainant is carsales.com.au Limited of Burwood, Victoria, Australia represented by Corrs Chambers, Westgarth, Australia is a Reverse Domain Name Hijacker
Case #11 Proto.com The Complainant is Proto Software, Inc., New York, New York, United States of America, represented by Byron Binkley, United States of America is a Reverse Domain Name Hijacker
Case #12 TrailBlazer.com Trailblazer Learning, Inc. represented by COO Brett W, Caledonia, Michigan is a Reverse Domain Name Hijacker
Case #13 DreamGirls.com The Complainant is Dreamgirls, Inc., Tampa, Florida, United States of America, represented by Christensen, Miller, Fink, Jacobs, Glaser, Weil & Shapiro, LLP, Los Angeles, California, United States of America and have been labeled a 'Reverse Domain Name Hijacker'.
Case #14 Mexico.com The Complainant is Consejo de Promoción Turística de México, S.A. de C.V., Colonia Anzures, Mexico, represented by Bello, Guzmán, Morales Y Tsuru, S.C., Mexico is a Reverse Domain Name Hijacker
Case #15 Windsor.com Complainant in this administrative proceeding is Windsor Fashions, Inc., a California corporation with a principal place of business in Los Angeles, California, United States of America. Complainant is represented in this proceeding by Abraham M. Rudy, Esq. and Julie Waldman, Esq., Weisman, Wolff, Bergman, Coleman, Grodin & Evall LLP, Beverly Hills, California, United States of America. They have been labeled a 'Reverse Domain Name Hijacker'.
Case #16 Mindo.com Complainants are Scandinavian Leadership AB and Mindo AB of Uppsala, Sweden, internally represented. They have been labeled a 'Reverse Domain Name Hijacker'.
Case # 17 and Sha.com he Complainant is Albir Hills Resort, S.A. of Alfaz del Pi Alicante, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain. They have been labeled a 'Reverse Domain Name Hijacker'.
Case # 18 etatil.com The Complainants are ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. of Istanbul, Turkey, Allstar Hotels LLC of New York, Unites States of America and Mr. Metin ALTUN of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey. They have been labeled a 'Reverse Domain Name Hijacker'.
Case # 19 Takeout.com. Complainant is Tarheel Take-Out, LLC of Chapel Hill, North Carolina, United States of America (“U.S.”), represented internally. They have been labeled a 'Reverse Domain Name Hijacker'.
Case # 20 WallStreet.com The Complainant is Wall-Street.com, LLC of Florida, United States of America (the “United States” or “US”), represented by Flint IP Law, United States. They have been labeled a 'Reverse Domain Name Hijacker'.
Case # 21 parvi.org found for the complainant in 2009 but in 2012 the courts rules that theCity of Paris, France was guilty of 'Reverse Domain Name Hijacking' in a landmark case that resulted in a $125,000 judgement against the city.
Case #22 Gtms.com The Complainant is Sustainable Forestry Management Limited, a company incorporated under the laws of Bermuda, with its principal place of business in London, United Kingdom. The Complainant is represented by its general counsel, Mr. Eric Bettelheim. They have been labeled a 'Reverse Domain Name Hijacker'.
Case #23 PetExpress.com The Complaintant is Airpet Animal Transport, Inc. represented by Mark W. Good of Terra Law LLP, California, USA. They have been labeled a 'Reverse Domain Name Hijacker'
Case #24 ColdFront.com Complainant is Personally Cool Inc. (“Complainant”), New York, USA. They have been labeled a 'Reverse Domain Name Hijacker'
Case #25 Unive.com Complainant is Coöperatie Univé U.A. of Arnhem, Netherlands, represented by Novagraaf Nederland B.V., Netherlands. 'Given the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding'
Case #26 eCase.com AINS, INC. (“Complainant”), represented by Janice W. Housey of Symbus Law Group, LLC, Virginia, USA. The panel concludes that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Case #27 TinyPrint.com Complainant is Tiny Prints, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA 'Complaint was brought in bad faith and that, accordingly, Complainant has attempted to engage in Reverse Domain Name Hijacking'
Case #28 Enki.com Complainant is Enki LLC (“Complainant”), represented by Eric A. Novikoff, of California, USA. 'This is a frivolous proceeding which should never have been filed by Complainant. Accordingly, the Panel finds that Complainant is guilty of Reverse Domain Name Hijacking'
Case #29 SFM.com Complainant is State Fund Mutual Insurance Co. represented by Peter G. Nikolai, of Nikolai & Mersereau, P.A., Minnesota, USA The Panel finds 'Complainant has engaged in Reverse Domain Name Hijacking.'
Case #30 Swash.com Complainant Procter and Gamble Represented by Keating Muething & Klekamp PLL. Procter and Gamble is a Reverse Domain Name Hijacker
'It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.
The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled underUSD 60,000.
Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.
In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.'
Case #31 3dCafe.com Complainant is 3DCafe, Inc. (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould, P.C., Minnesota, USA. The panel finds 'Complainant acted in bad faith. The Panel therefore makes a finding of reverse domain name hijacking.'
Case #32 xPand.com The Complainant is X6D Limited of Limassol, Cyprus, represented by Bracewell & Giuliani LLP, United States of America. 'The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.'
Case #33 Webpass.com The Complainant is Webpass, Inc. of San Francisco, California, United States of America represented by Law Office of Richard J. Greenstone, United States of America.
D. 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 general conditions for a finding of bad faith on the part of a complainant are well stated in Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 (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, WIPO Case No. D2000-1151 (January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 (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, WIPO Case No. D2000-0565 (July 17, 2000).
The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the mark WEB PASS. Indeed, the Complainant annexes a printout of the WhoIs registration to the Complaint, and that printout indicates that the domain name was created well before the Complainant’s first use in commerce of its mark. In this Panel’s view, this is sufficient to find reverse domain name hijacking. See NetDeposit, Inc. v. NetDeposit.com, WIPO Case No.D2003-0365 (July 22, 2003) (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).
The Panel finds that the Complainant has attempted Reverse Domain Name Hijacking.
Case #34 BSA.com Complainant is Bin Shabib & Associates (BSA) LLP (“Complainant”), represented by Jimmy Haoula, United Arab Emirates.
The panel finds that Complainant has failed to present any evidence to support its claimed rights in the disputed domain name. It only provided an application for trademark registration which does not establish any enforceable rights under the UDRP. It did not offer any evidence to support a finding of common law rights in the disputed mark. Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred.
See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel further finds that Complainant engaged in Reverse Domain Name Hijacking.'
My hope is this is the last RDNH case I will ever have to post. The reality is this post will be re-posted EVERY SINGLE TIME there is a case of RDNH. Every time and now maybe some value based companies will think twice before flirting with this tactic and come to the bargaining table un good faith instead of being labeled forever with bad faith. The net is written in INK!
THOU SHALT NOT STEAL! Stop trying to steal and start doing BUSINESS! Feel free to repost FAR and WIDE!
Rick Schwartz
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