More Domain Disputes Labeled 'Reverse-Hijacking'

merodach writes: "This article on technews.com actually has a rare piece of good news in it - two corporations whose attempts to take domains from others were rebuked as attempts at "reverse hijacking." We can only hope that maybe the arbitrators are finally beginning to see the light." Read the story and be amazed at the audacity of these companies.

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People already bitching about the /. effect

[Scutter]

WIPO Arbitrators Stern In Domain 'Hijacking' Rulings

By Steven Bonisteel, Newsbytes
GENEVA, SWITZERLAND,
19 Oct 2001, 5:20 PM CST

A pair of companies - including Swiss food giant Nestle - have received unusually stern rebukes from international arbitrators who say the firms attempted to abuse a procedure that is supposed to sort out disputes over the ownership of Internet domain names.
In two separate decisions published this week, arbitrators refereeing disputes on behalf of the Internet Corporation for Assigned Names and Numbers (ICANN) said the companies that had accused others of being cybersquatters were in fact attempting to "reverse hijack" the Internet addresses in question.

Findings of reverse hijacking are relatively rare under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP), even though the system for settling disputes over conflicts between trademark holder and domain-name registrants has seen more than 4,500 cases in less than two years.

But even rarer was the severity of the spanking received by Nestle at the hands of three arbitrators assigned by the World Intellectual Property Organization (WIPO).

Also accused of reverse hijacking - but reprimanded less harshly by another trio of WIPO arbitrators - was Boston-area software company Aspen Grove, which had attempted to claim the domain AspenGrove.com from a family in Salt Lake City.

Nestle had turned to WIPO's Arbitration and Mediation Center, one of four organizations accredited to resolve UDRP complaints, in a bid to evict another Swiss company, Pro Fiducia Treuhand AG, from the Internet address Maggi.com.

Nestle said the registration of Maggi.com clearly encroached on the trademark it holds for its Maggi brand of sauces and soups.

It complained that Pro Fiducia Treuhand, a financial and management consulting firm with some 40 employees, had no legitimate claim on the Maggi.com domain and that it had registered and used the address in bad faith because, after five years, the company had not made use of the domain for a Web site.

But Pro Fiducia Treuhand says there's a reason it is listed as the holder of Maggi.com: its chairman, Romeo Maggi, had provided the company contact information when he registered the domain for his personal use in 1996.

In his response to WIPO after Nestle's complaint, Maggi said he still plans to use the address to build a Web site for his family and that he had informed Nestle's lawyers of that when they contacted him in 1999. Maggi said appeals from Nestle for the domain actually led to a meeting between the two sides in Geneva a year ago.

The panel of WIPO arbitrators, led by Washington, D.C.-based international business law specialist Dennis Foster, ruled it was clear that Maggi had a legitimate interest in the Maggi.com domain. But what seemed to annoy the trio was that nowhere in Nestle's complaint did its lawyers mention the existence of the Pro Fiducia Treuhand chairman.

"The panel finds the failure of (Nestle) ... to set out any of the clearly lengthy background to this dispute is surprising," the panel said in a written ruling.

Pointing out that Nestle had certified in its complaint that the information it provided was, "to the best of (its) knowledge, complete and accurate," the arbitrators wrote: "The panel does not see how that could properly have been said."

"(Nestle) has ... avoided the full story," the panel wrote. "As a result of its rather lengthy dealings with Mr. Maggi, (Nestle) was aware that Mr. Maggi intended to use the domain name for personal use, yet (it) ignores these negotiations in the complainant and fails to even mention (Maggi's) alleged personal interest in the domain name."

"In fact the initial complaint misstated the registration record by failing to name Mr. Maggi as the administrative contact, an error later corrected when noted by the WIPO staff," the panel said. "Had Mr. Maggi failed to defend his position, perhaps complainant's lack of candor might have resulted in a decision in its favor."

"Having instead been exposed, that lack of candor concerning material facts, tied with the lack of legal merit to (Nestle's) position, leads us to the conclusion that this complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

In the case of the battling Aspen Groves, the workflow-software company from the east coast had complained that Michael Clark of Salt Lake City had no right to AspenGrove.com and that, as in the Maggi.com dispute, the lack of an active Web site at the address suggested a cybersquatter was at work.

Lawyers for Aspen Grove argued that, "by continuing to use the domain name without offering any or little content or any legitimate business use, (Clark) has confused (Aspen Grove's) prospective clients and business partners and has diluted the value of (its) trademark and reputation."

In a response filed on his behalf, Clark's lawyers blasted the notion that the lack of a commercial Web site constituted bad-faith use on an Internet address.

"Domain names may be owned by individuals and utilized solely for personal use," Clark's lawyers argued. "The rule advocated by (Aspen Grove) - that maintenance of a domain name without construction of a commercial Web site is tantamount to bad faith - ignores the history of the Internet and the World Wide Web, is inconsistent with the (UDRP), and is generally poor public policy."

Clark told Newsbytes that his family has used the domain - which reminded them of the aspens around their home at the time the address was registered - for personal communication, including e-mail and the sharing of family photos, for more than four years.

But the real clincher for the WIPO panel led by Mark Partridge, an intellectual property lawyer in Chicago, was that Clark had registered his domain in January of 1997 - a date which was not only before Aspen Grove applied to trademark its name, but which also pre-dated Aspen Grove's incorporation as a company.

Argued Clark's lawyers, "The complaint is based on the incredible premise that a business is ipso facto entitled to a domain name despite the fact that a private individual has registered and continuously used the domain name before the business even existed."

The WIPO arbitrators agreed, saying Aspen Grove's weak claim on a trademark and the fact that Clark's registration was two years ahead of the software company's incorporation justified a reverse-hijacking ruling.

"The panel finds the complainant, even though apparently knowledgeable and assisted by reputable counsel, nonetheless chose to file a complaint without a colorable claim and thus abused the ICANN proceeding," the arbitrators wrote.

Reported by Newsbytes.com, http://www.newsbytes.com .