Company fails to even make a prima facie of lack of rights or legitimate interest.
Specialty drinkware company Progressive Specialty Glass Company has engaged in reverse domain name hijacking.
National Arbitration Forum panelist Darryl C. Wilson came to this determination after the glass company filed a UDRP against Progressive Specialty Co Inc, a swag maker.
Both companies have been in a business for decades, and Progressive Specialty Co Inc. registered the domain name back in 1999.
It seems that, just recently, the complainant started pestering the respondent about her domain name. The complainant tried to get the respondent to sell her domain name. When that failed, it filed the UDRP.
The UDRP was pretty bad, with Progressive Specialty Glass Company failing to even make a prima facie case that the domain owner lacks rights and legitimate interests in the disputed domain name.
Wilson called this a case of “Plan B” reverse domain name hijacking:
Respondent contends that Complainant has used scare tactics and bullying to force Respondent to transfer the disputed domain name to Complainant. Complainant disputes that it has operated outside of proper business etiquette in any manner. The Panel notes that Respondent registered the disputed domain name in 1999 and operated its business for many years prior to Complainant’s mark registration and that Complainant’s own domain name
was registered in 2001. Respondent contends that she was unaware of Complainant’s existence until receipt of Complainant’s C&D letter and the threat of filing the present UDRP action. The Panel notes the parties engaged in negotiations over the possible sale and transfer of the disputed domain name but were unable to come to a satisfactory agreement. Complainant argues that its subsequent actions were warranted due to Respondent’s infringement of Complainant’s mark but Complainant provides no evidence of infringement. Complainant’s registration of the mark PROGRESSIVE SPECIALTY GLASS, INC. does not give Complainant exclusive rights to control the use of the individual words that constitute its mark. The marks are not identical and the parties businesses coexisted for more than a decade without any apparent conflict. Complainant did not contact Respondent until after Complainant registered its mark. But registration of a mark does not make prior use of similar marks suddenly infringing uses. The Panel here finds that the evidence supports a conclusion that Complainant’s assertions of Respondent’s bad faith registration or use are unfounded and Complainant has used the UDRP as a Plan “B” option to attempt to secure the domain after commercial negotiations have broken off. The Panel finds that reverse domain name hijacking is present.
Andrea Paladini says
That’s a typical case of “domain bullying” … 🙂 … good to see the panelist acknowledged the RDNH …