Panel admonishes company for not disclosing prior negotiations and for apparently reneging on deal.
A biopharmaceutical company has been found to have engaged in reverse domain name hijacking over the domain name transcrip.com.
TranScrip Partners LLP and TranScrip Limited filed the dispute against the domain name, which is owned by a domain name investor. The investor said it acquired the domain name in 2014 as part of a portfolio because of its value as a typo of the dictionary word transcript.
Importantly, the domain investor used a pay-per-click parking page with links related to transcription services. The three-person World Intellectual Property Organization panel wrote:
Respondent’s business model of “registering generic, descriptive, misspelling of common words, and acronym domain names” has been held to be a legitimate endeavor, so long as targeting of another’s trademark is not found. Monetizing domain names because of and in relation to their dictionary value is not in itself illegitimate, so long as there is no targeting of trademarks.
The panel also found that the Complainant didn’t provide sufficient evidence of common law trademark rights when the domain registrant acquired the domain. While it might not have known that the current owner also owned it in 2014, it didn’t address this deficiency in its supplemental filing.
In this case, the Complainant tried to acquire the domain name starting in 2015. Initial negotiations didn’t go anywhere, and at no time did the Complainant assert intellectual property rights during those negotiations.
In May of this year, the Complainant agreed to acquire the domain name for £12,000.
After striking the deal, the Complainant reached out to the Afternic broker and asked for the identity of the domain owner. Afternic said it was confidential. The Complainant subsequently reneged on the deal. In the UDRP dispute, it claimed that it backed out because “the Respondent’s agent sent terms which superseded any acceptance that had purportedly previously been made”. The panel determined that the Complainant was referring to agreeing to Afternic’s terms and conditions. But the Complainant’s representative in that transaction also claimed that the company’s board authorized a purchase at a lower price than what was agreed to.
The panel summarized the 2021 negotiations:
Although not discussed in the Complaint (though reflected in one of Complainant’s annexes), following earlier emails on May 4, 2021, on May 13, 2021, Complainant’s representative (“Ashton”) emailed Respondent’s broker (“Watson”) with a “final offer” – authorized by Complainant’s board – to purchase the Domain Name for GBP 12,000. The following day, May 14, 2021, Watson responded with the news that Respondent had agreed to sell the Domain Name for GBP 12,000, which at the time equated to USD 16,730. In this responsive email, Watson advised that it would be preferable (and cheaper for Complainant) to wire the funds in USD rather than GBP. Watson also provided a link to the Afternic transaction rules and some details about setting up an Afternic account to facilitate the Domain Name transfer.
On May 19, 2021, Ashton emailed Watson to inquire (as part of his “due diligence”) into the identity of the owner of the Domain Name. Watson demurred, stating that the seller’s identity is protected and not relevant to the transaction because the Registrar, GoDaddy, was representing Respondent in this transaction.
At no point during this 2021 pre-Complaint exchange did Complainant state that the Afternic terms of sale were in any manner objectionable.
On June 1, 2021, Watson followed up with Ashton for an update on the status of the transaction from Complainant’s side. On June 8, 2021, Ashton told Watson that Complainant’s board had authorized a bid for the Domain Name at a “much lower price” than the GBP 12,000 offer that Complainant had made back on May 13, 2021. The emails about the GBP 12,000 deal falling through were missing from Complainant’s annexes, but were provided with the Response.
In its September 1, 2021, supplemental filing, Complainant states that the 2021 transaction for GBP 12,000 did not go through “because the Respondent’s agent sent terms which superseded any acceptance that had purportedly previously been made”. Complainant is referring to the Afternic terms of sale and the need to open an Afternic account to effectuate the Domain Name transfer.
In its supplemental filing, Complainant does not even address, much less deny, the allegation that its board had authorized and made a GBP 12,000 offer to Respondent, but later claimed that the board had never authorized a purchase at anything near GBP 12,000.
In finding reverse domain name hijacking, the panel wrote:
Complainant should have known that its Complaint was doomed to fail, especially since Complainant was represented by counsel with a clear understanding of the UDRP (counsel quotes from the WIPO Overview 3.0 throughout the Complaint).
Indeed, when the initial Complaint was filed on July 9, 2021, Complainant evidently did not realize that Respondent acquired the Domain Name in 2014.
Once Complainant received Respondent’s August 21, 2021 Response however, Complainant at least became aware that Respondent actually acquired the Domain Name in April 2014. In its September 1, 2021, supplemental filing, Complainant did not even attempt to assert (much less prove) any common law trademark rights in TRANSCRIP prior to April 2014, or offer any allegations or proof that Respondent had targeted Complainant’s trademark in April 2014.
Under these circumstances, Complainant, represented by counsel, should have known then that its Complaint was lacking in the requisite allegations and supporting evidence. After receiving the Response, if it was unable to provide such allegations and supporting evidence, arguably Complainant should have withdrawn its Complaint.
Instead, Complainant exacerbated matters by filing its September 1, 2021 supplemental filing. First, the Panel cannot credit Complainant’s explanation why it failed to disclose the 2015-2016 discussions about a possible sale of the Domain Name. Complainant states that its erstwhile IT staffer “David” made inquiries six years earlier, which management had forgotten. The supplemental filing does not assert that David made such inquiries of his own accord. Rather, the email exchanges from that period seem to show that David was in contact with Complainant’s management about the Domain Name.
Moreover, even if Complainant’s “cannot recall” explanation were plausible, Complainant certified that its Complaint was “to the best of the Complainant’s knowledge complete and accurate”. A UDRP complainant is “under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint”. BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.
The Panel also doubts Complainant’s explanation, in the supplemental filing, about why the May 2021 transaction to buy the Domain Name for GBP 12,000 fell through. The Panel is left with the inference that Complainant reneged on the deal – which Complainant had initiated – because it ultimately concluded that it could wrest the Domain Name from Respondent via the UDRP process and avoid paying the agreed price of GBP 12,000.
Complainant asserts that the May 2021 deal fell through because Respondent had introduced new terms to the deal, which essentially voided the initial offer and acceptance. In sum, the Panel is inclined to agree with Respondent that Complainant’s explanation about the failed May 2021 transaction is an “ex post facto rationalization” and “bereft of credibility”.
In sum, Complainant should have known that it could not succeed under any fair interpretation of facts available prior to the filing of the Complaint; yet it pursued the Complaint on only the barest of allegations, bereft of any supporting evidence of substance. In so doing, Complainant unreasonably ignored established UDRP precedent as captured in WIPO Overview 3.0, a document with which it was familiar. The Panel concludes that Complainant has filed and pursued this Complaint in bad faith and therefore a finding of Reverse Domain Name Hijacking against Complainant is warranted.
It’s worth noting that the Complainant had revenue of nearly £6 million last year. It seems odd that a company of this size would agree to buy a domain at a relatively low price, and then spend thousands of dollars on legal fees to try to get it for free. It’s now left without the domain name and the money it spent on the UDRP.
Fox Williams LLP represented the Complainant. Muscovitch Law P.C. represented the domain name owner.
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Original article: TranScrip Partners found to have tried reverse domain name hijacking
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