Carmans.com.au auDRP

[Cooper Mills DomainLawyer]

just thought I would post an interesting auDRP decision released today on carmans.com.au - the Panel found the complainant to have engaged in reverse domain name hijacking (RDNH), this is only the 5th RDNH case under the auDRP (the last one was the case I ran on etg.com.au in 2015) http://www.wipo.int/amc/en/domains/search/text.jsp?case=DAU2015-0041

I will write some further analysis on it, but it is clear the Panelist found that the Complainant had mislead the Panel. The panelist was John Swinson, one of the most experienced auDRP panelists. It was a good solid decision, particularly in a case where the respondent had registered the domain name in 1998!

 

[atom]

These are always an Interesting read.

You can't get any better than a domain being your surname and registering it in 1998. It just shows you that there isn't a shortage of people that will try it on!

 

[Cooper Mills DomainLawyer]

The good thing about this decision and the ETG.com.au decision is that Panels have made it very clear that if Complainants mislead or fail to disclose material facts to the Panel, the Panel will be prepared to make RDNH finding. I am hopeful that this will send a message to brands out there and law firms who in some cases abuse the system.

 

[Cooper Mills DomainLawyer]

Also I missed this case from last year prtg.com.au - another RDNH finding

 

[DomainNames]

Auda may wish to look at the Canada policy whereby Reverse Domain name hijackers can be forced to pay the registrant $5000 to cover their costs of defending a wrongful complaint

http://www.rdnh.com/
http://domainnamewire.com/2013/06/1...0-after-reverse-domain-name-hijacking-charge/
http://blog.dnattorney.com/2013/06/domain-hijacker-ordered-to-pay.html

ORDER ON REGISTRANT’S CLAIM FOR COSTS

The Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking and that such activity on behalf of the Complainant constitutes an improper attempt under paragraph 4.6 of the Policy to obtain a transfer of the Domain Name to the Complainant.

Therefore, the Panel has determined to exercise its authority pursuant to paragraph 4.6 of the Policy and to award the Registrant costs.
The Panel hereby orders that the Complainant pay to the BCICAC in trust for the Registrant the sum of $5,000 to defray the costs incurred by the Registrant in preparing for, and filing material in this matter.

 

[Cooper Mills DomainLawyer]

Auda may wish to look at the Canada policy whereby Reverse Domain name hijackers can be forced to pay the registrant $5000 to cover their costs of defending a wrongful complaint

http://www.rdnh.com/
http://domainnamewire.com/2013/06/1...0-after-reverse-domain-name-hijacking-charge/
http://blog.dnattorney.com/2013/06/domain-hijacker-ordered-to-pay.html

ORDER ON REGISTRANT’S CLAIM FOR COSTS

The Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking and that such activity on behalf of the Complainant constitutes an improper attempt under paragraph 4.6 of the Policy to obtain a transfer of the Domain Name to the Complainant.

Therefore, the Panel has determined to exercise its authority pursuant to paragraph 4.6 of the Policy and to award the Registrant costs.
The Panel hereby orders that the Complainant pay to the BCICAC in trust for the Registrant the sum of $5,000 to defray the costs incurred by the Registrant in preparing for, and filing material in this matter.

I like this idea - I think it is worth raising at the next auDRP review

 

[Shane]

I posted on their Facebook timeline about it. I have must have too much time this morning... I'm sure it will get deleted.

 

[Shane]

They replied via Facebook...

"Hi Shane - there were a number of decisions in the outcome. The WIPO Panel found that Carman's succeeded in making out a claim that the carmans.com.au domain name is identical or confusingly similar to trademarks in which Carman's has rights. The Panel also found that Carman's made a case that the domain name holder did not have a legitimate interest in the domain name. Although we’re disappointed in the ultimate findings of the WIPO Panel (in particular the finding of bad faith), we fully accept the Panel's decision not to grant the domain name. Thanks, the team at Carman’s."

 

[Cooper Mills DomainLawyer]

They replied via Facebook...

"Hi Shane - there were a number of decisions in the outcome. The WIPO Panel found that Carman's succeeded in making out a claim that the carmans.com.au domain name is identical or confusingly similar to trademarks in which Carman's has rights. The Panel also found that Carman's made a case that the domain name holder did not have a legitimate interest in the domain name. Although we’re disappointed in the ultimate findings of the WIPO Panel (in particular the finding of bad faith), we fully accept the Panel's decision not to grant the domain name. Thanks, the team at Carman’s."

Not a good idea trying to sugar coat that result - disaster is what I see.....I'll give them credit for having the decency to respond to you

 

[DomainNames]

They replied via Facebook...

"Hi Shane - there were a number of decisions in the outcome. The WIPO Panel found that Carman's succeeded in making out a claim that the carmans.com.au domain name is identical or confusingly similar to trademarks in which Carman's has rights. The Panel also found that Carman's made a case that the domain name holder did not have a legitimate interest in the domain name. Although we’re disappointed in the ultimate findings of the WIPO Panel (in particular the finding of bad faith), we fully accept the Panel's decision not to grant the domain name. Thanks, the team at Carman’s."

Can you post this on their facebook so they start to realise they need to wake up? . Companies ( and some of their lawyers) who do RDNH never change and they never admit their improper ways at trying to screw people.. I have seen a lot of them and yes AUDA needs to bring in the $5000 reimbursement for the registrants so they at least get some of their costs back. If Canada has used the rule successfully to help limit RDNH culprits or at least make them account we could also most likely in the Australian namespace.

" ORDER ON REGISTRANT’S CLAIM FOR COSTS
The Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking and that such activity on behalf of the Complainant constitutes an improper attempt under paragraph 4.6 of the Policy to obtain a transfer of the Domain Name to the Complainant.

Therefore, the Panel has determined to exercise its authority pursuant to paragraph 4.6 of the Policy and to award the Registrant costs.

The Panel hereby orders that the Complainant pay to the BCICAC in trust for the Registrant the sum of $5,000 to defray the costs incurred by the Registrant in preparing for, and filing material in this matter. "

 

[Christopher]

Interesting stuff.
I am a total newbie, learning every day. That was the longest bit of text I have read in a long while.

From the report I have a few bits that stood out to me, If you guys could clarify for me that would be great!

From section C:

"There is no requirement in the Policy that a Respondent must be using a domain name at the time a complaint is filed to be able to demonstrate rights or legitimate interests in the domain name."​

If I was to register a .com.au for the purposes of using it some time in the future, but just have it parked or a landing page. If someone wanted it for a business can they contest me for it? Or am I safe to do nothing with the domain at this time?

From Section D:

"It is not necessarily bad faith for a party to register a domain name that is similar to their personal name or business name, even if that party is aware that someone else has a similar trade mark, provided that the party does not intend to trade off the reputation of the trade mark."​

Does this mean that If a person has a first and or last name that they register with a .com.au for the purposes of using the domain as personal use, And in no way trying to pass off as the company can do so even if it is considered a trademark at the time of register?

My example would be Going out on a limb here to prove an example.

The registrant of chipsmith.com.au (which no one owns) might be seen as an infringement of trademark of smith chips (Which funny enough also not owned) but is merely a play on his direct name https://en.wikipedia.org/wiki/Chip_Smith Obviously this American wouldn't be able to register unless he had some business here, but it was used as an example, I also see that possible smiths chips is not protected by a current trademark. http://pericles.ipaustralia.gov.au/...earch_No=8&p_Lastrecord=FALSE&p_Is_Internal=F

Thoughts?

 

[Horshack]

Hi Cooper Mills, have you been involved in any cases where a registrant has registered a domain name and the complainant already holds a fancy trademark with words in a logo but has unsuccessfully applied to trademark the word itself?

 

[Cooper Mills DomainLawyer]

Hi Cooper Mills, have you been involved in any cases where a registrant has registered a domain name and the complainant already holds a fancy trademark with words in a logo but has unsuccessfully applied to trademark the word itself?

I have had this type of situation before, typically it involves generic descriptive terms, which the trademarks office has rejected as a word mark, so the person has gone ahead and registered a logo containing the term. The person then uses this to try and bully a registrant to take their domain....