Trademark owner rapped for hijacking domain names


A trademark owner has been slammed for reverse domain name hijacking, an act rarely seen in cybersquatting disputes.

Reverse domain name hijacking occurs when trademark owners bring malicious Uniform Domain Name Dispute Resolution Policy (UDRP) complaints.

The Office of Medical & Scientific Justice, a private criminal investigator, complained over the domains and

J Todd DeSchong, the case’s respondent, registered the domains in July 2011 and uses them as ‘gripe sites’, hosting claims that the office is untruthful about the success of some of its work.

The office said the domains were confusingly similar to its US trademark HIV Innocence Group, approved in 2012 but which it claimed to have used since 2009. Additionally, the complainant said, the respondent had no legitimate interest in the sites.

But the respondent showed, using news reports, emails and website screen shots, that the complainant was still using a different name – HIV Innocence Project – until 2011, two years after it was said to be using HIV Innocence Group. The respondent said it used the domains in a non-commercial way, and was protected by free speech rights.

The panellist in the case at the National Arbitration Forum, Houston Putnam Lowry, rejected all the complainant’s arguments and slammed it for reverse domain name hijacking.

 “It was clear respondent was legitimately using complainant’s mark to make a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” he said.

He added: “Complainant clearly knew this before it began this proceeding.  Complainant did not disclose this obvious fact in its complaint.”

There was no punishment for the office but Eric Rutt, associate at law firm Wolf Greenfield in Massachusetts, said such findings can ensure that trademark owners lose credibility in future UDRP cases, with respondents drawing attention to their poor track records.

He added: “Here, it was not all that close and well deserved – the panellist had been misled. Reverse domain name hijacking is reserved for the most egregious claims.”

Rutt said that when dealing with a criticism site, complainants need to “figure out how the use isn’t fair” – if possible – as there are times when criticism sites have a mix of commercial non-commercial interests.

But he said: “It appears difficult here to make out any commercial use at all. If there is true fair use, then you shouldn’t be bringing the complaint.”

In March this year, a database of reverse domain name hijacking cases was set up on the website, with 144 cases listed to date. One of the site’s founders, Andrew Allemann, editor of news blog Domain Name Wire, encouraged people to help by referring cases to the site. There are cases dating from 2000 (when the UDRP was formed) to the present day.

This article was first published on 14 May 2013 in World IP Review

udrp, reverse domain name hijacking, naf, The Office of Medical & Scientific Justice

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