Weeds.com UDRP: Reverse Domain Name Hijacking Ruling

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In early August, a UDRP was filed against Weeds.com, Weeds.net, and Weeds.org. As I noted when I first saw the filing, the domain names did not appear to be owned by one single entity. As a result, it seems that Weeds.net and Weeds.org were removed from the UDRP filing, so WIPO Case D2017-1517 is now showing that it is only for Weeds.com.

I just learned that the UDRP was decided, and the three person panel ruled in favor of the domain owner. In addition, the panel found that this was a case of Reverse Domain Name Hijacking (RDNH). The domain owner was represented by attorney Zak Muscovitch of Muscovitch Law P.C., Canada.

Because of the panel’s findings in the section about registering and using the domain name in bad faith, it looks like the panel took a pass on ruling about the domain name being identical or confusingly similar as well as whether the domain owner had rights or legitimate interests in the domain name. In the section about registering and using the domain name in bad faith, the panel did not find in favor of the complainant.

There are several reasons for why the panel found that the domain name was not registered and used in bad faith. For owners of descriptive dictionary .com domain names that are available for sale, the following excerpt from the decision is notable:

“Complainant also contends that the disputed domain name has been acquired for unlawful brokering, sale and/or auction, for exorbitant prices, in an extortive manner, and primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Complainant submits as evidence of Respondent’s bad faith purpose a printout of the website at the disputed domain name showing that the domain name is being offered for sale at USD 250,000.

To this, Respondent replies that selling domain names with commercial value can itself be a bona fide offering of goods or services, and a “general offer” to sell a generic domain name is not evidence of bad faith, absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark. Respondent adds that it did not solicit the sale from Complainant, and that it was Complainant’s Vice-President who made an inquiry regarding the purchase of the disputed domain name. Respondent further contends that it simply responded via a domain name broker to this offer initiated by Complainant, a fact that Complainant never disclosed. Complainant’s Vice-President was advised of the purchase price of USD 294,118, and responded that he was not interested in the purchase at that price, making no reference to any purported trademark rights or claim.”

Here’s what the panel ruled when it came to the discussion about RDNH:

“The Panel notes that Complainant is represented by IP counsel. Thus is should have been quite clear from the outset that Respondent had registered a domain name consisting of a common, descriptive, dictionary word, before Complainant filed its application for the WEEDS mark.

In addition, it is well established that invoking a common law mark – as did Complainant – requires providing the Panel with concrete evidence of secondary meaning / acquired distinctiveness, which Complainant failed to submit.

Lastly, while Complainant contended that Respondent registered the disputed domain name primarily to sell it to Complainant, it made no mention of the fact that it was Complainant’s Vice-President who had first contacted Respondent to make an inquiry about the purchase of the disputed domain name.

For these reasons, the Panel finds that the Complaint is an attempt at Reverse Domain Name Hijacking.”

Unfortunately for the domain owner, it appears that the complainant has already filed a lawsuit (according to Domain Name Wire). I will keep my eye on this, but it would not be surprising to see a countersuit similar to the one filed by Telepathy, in which a settlement was reached and the company that initially filed the UDRP agreed to pay $40,000.

7 COMMENTS

  1. When you know you don’t even dare try it for one like weed.com, but you delude yourself you can get away with it for weeds.com…and sadly enough, they sometimes have reason to think that.

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