Law firm “careless” in filing cybersquatting dispute against domain CCK.com

Law firm “careless” in filing cybersquatting dispute against domain CCK.com

Law form tried to get three letter .com domain name through UDRP.

A World Intellectual Property Organization panel has determined that the law firm that filed a UDRP for CCK.com was “careless”, but stopped short of finding it a case of reverse domain name hijacking.

Chisholm Chisholm & Kilpatrick LTD, which uses the domain names cck-law.com and cck.law, filed the case and was represented by Hinckley, Allen & Snyder, LLP.

WIPO Panelist Matthew Kennedy found that the complainant did not show the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. He did not consider the other two elements of UDRP.

It appears the domain was purchased earlier this year by a Chinese domain name investor.

The complaint, as summarized by Kennedy, argues:

The disputed domain name was registered and is being used in bad faith. The Respondent did not acquire the disputed domain name until well after the Complainant’s first use of the CCK mark. Even if the Respondent did not acquire the disputed domain name in bad faith, its subsequent use of the disputed domain name in bad faith can satisfy the third element of the Policy. The Respondent is using the disputed domain name in bad faith, primarily because (a) it acquired the disputed domain name primarily for the purposes of selling it for an amount in excess of the Respondent’s out-of-pocket costs, (b) the Respondent is preventing the Complainant from reflecting its CCK mark in the domain name and the Respondent is engaged in a pattern of similar behaviour involving other trademarks, and (c) the Respondent is not using the disputed domain name in conjunction with a business.

The Complainant submits that the Respondent is in the business of registering and passively holding thousands of domain names, presumably with the intent to monetize those domain names. The Complainant provides copies of emails from a domain broker employee of the Registrar offering to sell the disputed domain name for at least USD 100,000. The Complainant also provides a reverse WhoIs report regarding the name of the Respondent and the abuse contact email of the Registrar identifying over 1,000 domain names, ninety-eight percent of which are undeveloped. Some of these domain names incorporate the trademark of third parties.

The problem with these arguments is that there’s no suggestion that the domain owner was targeting the law firm. Indeed, it seems highly unlikely.

In considering reverse domain name hijacking, Kennedy writes:

The Complainant certified that the information contained in the Complaint was to the best of the Complainant’s knowledge complete and accurate. However, the Panel considers the submission of a series of conclusory allegations together with a copy of the Complainant’s homepage to be no more than a token effort to substantiate trademark rights. Further, the Complaint alleges that the Respondent has engaged in “a pattern of bad faith registrations” when the Complainant is unable to identify even one domain name held by the Respondent that incorporates the trademark of a third party, mentioning only “shijiebei” as a translation of “world cup”. The Complaint also alleges that the registrant of the disputed domain name was an unrelated entity as of April 4, 2018 but simultaneously alleges that the Respondent offered to sell the disputed domain name in email correspondence sent on April 4 and 5, 2018.

But Kennedy stopped short of finding reverse domain name hijacking:

After due consideration of the evidence, the Panel considers that the Complainant has been careless in filing its Complaint but the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.

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