Andrew Allemann 2 Comments October 23, 2024

The domain was registered well before the company was established.

A panelist from the World Intellectual Property Organization (WIPO) has concluded that a financial data firm lodged a dispute against EagleData .com in bad faith.

In the United States, Eagle Data, Inc. operates using EagleData .biz and initiated the dispute. The domain in question is registered by Eagle Data Inc. in Singapore.

The complainant seems to have submitted a rather flimsy grievance utilizing WIPO’s online form and the standard UDRP complaint template.

The key issue is that the complaint was lodged significantly after the domain name was acquired and lacks any claims that the domain ownership has changed since then.

In her determination of reverse domain name hijacking, panelist Jeremy Speres remarked that the standard UDRP complaint highlights (in red lettering):

“[N.B., registration in bad faith is typically regarded as only feasible when the domain name registration occurs after your trademark rights are established, please consult section 3.8 of the WIPO Overview 3.0.]”

Speres documented in a pdf:

The Complainant either became aware of the bad faith requirement and chose to move forward with the Complaint despite knowing it would fail, or they recklessly submitted the Complaint without adequately assessing the supporting documents. Both scenarios are deserving of criticism.

In the Complaint, the Complainant explicitly recognized that the disputed domain name had been under the Respondent’s control since at least 2003, indicating an understanding that the registration predates the Complainant’s rights to its mark.

Given these circumstances, the Complainant either knew or ought to have realized when filing the Complaint that one of the key elements mandated by the Policy could not be substantiated. It is evident that the Respondent registered the disputed domain name a significant time before the Complainant even existed or applied for its trademark.

The owner of the domain name failed to respond to the dispute.

Categories: Policy & Law. Tags: reverse domain name hijacking, udrp, wipo, world intellectual property organization.

Comment by abdelwahed:

October 23, 2024 at 4:21 pm

Can acquiring an old name from an expired domain justify the removal of that name from your possession? For instance, if a domain was registered in 2001 and expires in 2024, and you obtain it through an expired auction, what happens if a company trademarked that same term in 2021? Does this mean you will lose ownership of the name?

Andrew Allemann says

October 23, 2024 at 9:42 pm

That scenario illustrates what is meant by ‘changing hands’. While it does not automatically result in losing a UDRP case, it does reduce your chances of contesting the case successfully.

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