A panelist who represents a lot of Complainants doesn’t find reverse domain name hijacking.
A UDRP panelist has correctly denied a cybersquatting claim against the domain name GPI.com but failed to find reverse domain name hijacking.
The facts of the case are pretty damning, but once you see the panelist’s name, you won’t be surprised that she gave the Complainant a pass.
Nathalie Dreyfus.
Yes, the same person who went against two other panelists and argued that bespoke.com should be transferred. The same person who represents Complainants in cases.
Great Plains Ventures, Inc. filed the dispute against CarQuest.
The Whois record was not private, and it clearly shows CarQuest as the registrant and an email address pointing to Advance-Auto.com.
You don’t have to be a super sleuth to do a quick Google search for “Advance Auto GPI” or “CarQuest GPI” to quickly see a connection. That connection is an acquisition of General Parts, Inc.
Done. Case closed. The Complainant should have seen that connection and decided not to file the case.
Add to that that there was no apparent targeting of the Complainant with this three letter domain, such as a parked page with ads related to the Complainant or exclusive rights to the term in question, and the case is really closed.
Yet, after the Respondent helpfully pointed this out to the Complainant in its response, and showed that it uses a subdomain of the domain, and argued this was a case of reverse domain name hijacking, and the Complainant had a chance to withdraw the complaint…the Complainant doubled down.
The Complainant argued that the domain registration date should be 2010 because of the transfer of the domain to a new party (it was actually part of a corporate acquisition). Then it said the company ‘re-registered’ the domain in 2016 after it had stopped using the GPI mark in commerce.
And Great Plains Ventures argued it couldn’t have known the connection between the domain owner and GPI because, apparently, it doesn’t know how to use Google:
Respondent argues that Complainant is using the UDRP process in bad faith to try to hijack a domain that has been legitimately used in good faith for decades. However, an Internet search of the GPI acronym does not yield any search results related to Respondent or its affiliates. Nor does the contact information for Respondent in the WHOIS record for the Domain Name make any reference to GPI.
Assuming the Complainant truly didn’t understand the connection, it could have withdrawn the case. Instead, it offered to purchase the domain as part of a settlement. Then, after the Respondent filed its response, it pushed forward despite no possibility of winning.
Dreyfus correctly found that Great Plains Ventures didn’t show the domain registrant lacked rights or legitimate interests in the domain, and correctly ruled that the domain wasn’t registered in bad faith.
But on reverse domain name hijacking, she gave the Complainant a break:
The letters “GPI” have an obvious derivation from the General Parts, Inc., name. However, Panel finds that it was not possible for the Complainant to ascertain if and how the Respondent was in fact using the disputed domain name in the absence of a public facing use such as publicly accessible website. The fact that the use was not open to public inspection is a factor which must be taken into account in weighing the appropriateness under the Policy of the Complainant’s decision to bring the Complaint.
Complainant owned incontestable Trademark registrations, Respondents had no registration at the time of filing the Complaint, and Respondent did not seem to be making any use of the GPI mark. Moreover, although the Panel understands that Respondents’ (sic) offer to try to settle this dispute was a good faith effort to avoid the expense and inconvenience of litigation, the Panel concludes that it did not bring the Complaint in bad faith.
In other words, because the Complainant has a reason to be interested in the domain, and gpi.com didn’t appear to be in use, the case wasn’t brought in bad faith?
Kronenberger Resenfeld, LLP represented Great Plains Ventures. Brient IP Law, LLC represented the domain name owner.
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