Month: July 2014

Remember how often I’ve said it’s important to hire counsel experienced with the UDRP and all of its nuances? At least one brand owner and one law firm in Denmark haven’t gotten the message.

In the recent case of Dealhunter A/S v. Richard Chiang, WIPO Case No. D2014-0766, the domain name dealhunter.com was registered in 1998, but the complainant only started using his DEALHUNTER trademark in 2007. Also, the complainant registered his own domain name, dealhunter.dk, in November of 2010, over a decade after the respondent acquired the domain at issue in this case. The respondent claimed that he worked to create a daily deal site but was sidetracked by a death in his family.

Addressing the question of bad faith registration, the three-member panel noted that “there is no possibility that the Respondent, when it registered the Domain Name in 1998, could have been aware of the Complainant or rights in the DEALHUNTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.”  They also mentioned that “the Respondent’s Website make[s] no reference to the Complainant or its area of business.”

Adding salt to the complainant’s wound, the panel noted that there are many other uses of this rather descriptive phrase and stated that “Complainant is clearly overreaching in its effort to seek exclusive control of the words ‘Deal Hunter.’”

It seems that the complainant had contacted the respondent and sought to purchase his domain but, when the asking price was too high, complainant and his counsel felt that the UDRP could be used for leverage in their negotiations. Rather than roll over, the respondent hired a U.S. law firm well-versed in UDRP defense, and so the prey turned the tables and became the hunter.

Rather than simply defend the case, respondent accused the complainant of reverse domain hijacking – a defense recognized in UDRP Rule 15(e).  The panel discussed the history of this defense and noted that “allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.”

Here, the complainant knew that the dealhunter.com domain name was registered nearly nine years before the complainant came into existence and close to 15 years before the complainant acquired any registered rights in the DEALHUNTER trademark. The complainant made two offers to purchase the domain name, and following the rejection of those offers and the registration of the DEALHUNTER mark, chose to bring this complaint.

The panel ultimately held that the complaint “had no reasonable prospects of success” and was thus brought in bad faith.

This finding of reverse domain hijacking, unfortunately, will haunt both the complainant and his counsel since their credibility in any future cases will be tainted with the stain of this over-reaching.

So what’s the lesson here?  All together now, class: “Only hire experienced UDRP counsel.”

I rarely comment on FairWinds’ own cases, but this one, filed with the National Arbitration Forum (NAF) on behalf of DD IP Holder LLC (Dunkin’ Donuts) over dunkin.menu – is worth special mention due to the truly inventive but deceitful way in which the respondent defended his registration and use of the disputed domain name.

The respondent makes the rather creative claim that he teaches a series of basketball clinics in New Delhi offering a “menu” of different dunking (“dunkin”) techniques. He submitted digital mock-ups of posters, which he claims promoted his efforts at local schools (see example).  

Since something smelled fishy about these posters and the idea of using the word “menu” in this way, I called these schools. They said they had never heard of the respondent or his classes.  In his Additional Statement, the respondent explained that many of the schools refused to display his posters or host his program due to discrimination against poor children in India.

I had also submitted a reverse whois report showing that the respondent owns over 360 domains, many of which infringe on various well-known global and local  brands.  I asked whether the respondent would submit additional evidence that he teaches a “menu” of techniques in music under his hardrock.menu domain, in cooking using leancuisine.menu; in the history of old western films with RoyRogers.menu; and in the astronomy of celebrity residences at PlanetHollywood.menu.  Would he also rationalize his registration of domains that have no such convenient meanings such as Marriott.menu, Quorn.recipes, and Sbarro.menu? The respondent claimed that he’s holding these domains for possible future ventures such as franchises.  All of this additional cybersquatting further calls into question the validity of respondent’s claims and evidence.

In its decision, the panelist addressed the question of whether respondent has any rights or legitimate interests in the Dunkin.menu domain, saying  “Respondent relies on his right to use a descriptive word ‘dunkin’ as a domain name to promote his basketball courses. However Respondent has not furnished any evidence that he has ever held such courses… When challenged that such documents [the posters] were fabricated for the purpose of this Complaint, Respondent then asserted that while he had used the posters and flyers for promotional literature, he had failed to organize the events due to impediments put in his way by the management of the schools.”

Next, on the topic of bad faith, the decision states: “This Panel finds that on the balance of probabilities Respondent chose and has used the disputed domain name because of its confusing similarity to Complainant’s trademark and service marks and not for the reasons that he has put forward. His explanations are ingenious but improbable and unsupported by any evidence.”

Critical to this case is the fact that UDRP panelists are bound to consider only the evidence before them, since there’s no discovery or cross-examination in these proceedings. This panelist could have accepted the respondent’s manufactured evidence, saying, in effect, that “my hands are tied by the UDRP process”.

However, due to his experience in these matters, he saw through the ruse and acknowledged our counter-evidence and the fact that the respondent, himself, back-pedaled when he admitted some of the schools didn’t display his posters. In the end, the panelist decided to weigh the evidence rather than simply accept the respondent’s claims and posters at face value, thus arriving at the right conclusion that respondent is a cybersquatter trying very hard to game the UDRP system.

While the respondent does have the option to appeal, past experience suggests that doing so will only be a waste of his money and time since brand owners aggressively defend such ransom cases. Of course, the respondent does own several other infringing domains (noted above and listed in the decision). We’ll just have to wait and see if Lean Cuisine, Marriott, Campbell’s Soup, etc. start offering the respondent franchise opportunities at some point in the future.

If you’re planning a mid- or end-of-summer vacation, you may have visited the website of a hotel, perhaps even the hotel that filed the complaint in this week’s decision – Sheraton Hotels & Resorts Worldwide Inc.

Sheraton and two of its affiliates filed the complaint over sheraton.email and sheratonparklane.email against respondent Giovanni Laporta of yoyo.email. He’s already been hit with a slew of URS and UDRP complaints by some of the brand owners his domains have copied, and a number of URS decisions have been issued, all against the respondent. This one was no different except that it was the first UDRP decision against Mr. Laporta and the panelist found that the domains in dispute met all of the criteria to be transferred to the complainant. The respondent claims to be exercising fair use of these and other famous branded .email domains, explaining that his business – Yoyo – will allow users to send emails to these companies, through him, and he will track and confirm delivery of the email – presumably about customer service issues and disputes against the brand owners. Although the service is supposedly provided free of charge, the respondent has admitted that it will be monetized in some yet-to-be-decided manner.

Despite the claim of fair use, the panelist held that “the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.” The panelist also noted that Respondent has registered many other domains incorporating other famous trademarks and commented that “this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its [the respondent’s] recorded delivery services, based partly on the Respondent’s prior possession of domain names incorporating that very party’s own trademark.” While the domain owner’s email service sounds like a good idea, this string of cases suggests that he’d better find another naming convention for his domains.