Tuesday, May 14, 2013
You Be a UDRP Detective: Was This Cybersquatting or Reverse Domain Name Hijacking?
By Zak Muscovitch.
Once in a while I see a case that is a real "head-scratcher" where I can't figure out whether the Panel got the case right. Such was the recent case involving TheChiaCo.com that was released this week.
The case involved an Australian trademark owner and a New Zealand domain name registrant. The Australian complainant, The Chia Co., sells Chia-based products. Chia is a kind of flowering plant that is grown commercially for its seed which is used in foods and oils.
The domain name was registered on December 30, 2007. The complainant's trademark was registered later, on August 6, 2009.
The Panel ruled that since the "respondent registered the domain name eighteen months prior to the complainant's trademark registrations", the "respondent could not have registered the domain name in bad faith under the Policy".
From the above simple facts, it would certainly appear that the Panel got the case "right"; where a domain name registration pre-exists a trademark, it is simply impossible for the registrant to have targeted a trademark, since it did not even exist when the domain name was registered.
Although "mere lack of success" in prosecuting a UDRP complaint is not usually sufficeint to make a finding of Reverse Domain Name Hijacking, where a complainant brings a UDRP based upon a trademark which was not even in existence when the domain name was registered, Reverse Domain Name Hijacking is often found (See for example, M. Corentin Benoit Thiercelin v. Cyberdeal, Inc., WIPO Case No. D2010-0941).
So why was Reverse Hijacking not found in this case? Perhaps the respondent did not request it, although a Panel is entitled, and arguably should, make a finding of RDNH even when it is not specifically requested by a respondent (See UDRP Rule 15(e)). Another possible explanation is that the Panel smelled something funny here (for example, the respondent claimed that it registered the domain name in 2007 because it somehow stood for "The Chia Caps Oil"), although if that were the case one would have reason to believe that the Panel would have decided to transfer the domain name.
Perhaps another reason why the Panel declined to make a finding of RDNH, was that there were some peculiar issues. For example, although the Panel apparently quite properly ruled that a trademark must precede a domain name registration, the Complainant apparently only relied upon its registered trademarks, when the UDRP allows a complaint to be based upon common law, or unregistered trademarks as well.
Although not mentioned in the decision, and ostensibly not even argued by the Complainant, according to the Australian corporate registry, the complainant was incorporated in Australia in 2003, and according to archive.org, has had an active website associated with its primary domain name, http://thechiaco.com.au, since at least December 5, 2006. That means that possibly, the complainant had acquired common law trademark rights in THE CHIA CO a year prior to the domain name having been registered by the respondent. The complainant in this case may have missed out on arguing common law trademark rights, and as a result, the Panel may have had to rule on the complainant's relatively recent registered trademark rights alone.
As well, it is worth noting a few other additional facts that were apparently submitted by the complainant, yet were apparently not considered given that the Panel found that the domain name pre-existed the complainant's registered trademarks:
1. The respondent is from New Zealand, which is "right next door" to the complainant's location of Australia;
2. At the time that the domain name was registered, the complainant was already actively trading in the New Zealand market, including at a well known bakery located in the same city as the respondent resided in; and
3. The complainant alleged that the respondent had also registered a number of domain names "that were all variations of key chia players in the market", and parked all of these domain names since 2007 as well.
Regarding #3, above, these names were not disclosed in the decision, and I was unable to readily identify them.
Also noteworthy, is that "The Chia Co" is arguably a pretty descriptive and generic mark, and that may be why the complainant apparently had only word & design marks (i.e. logos) rather than pure word marks, since most trademark offices might refuse a registration for something descriptive like this, since it is not considered a "distinctive" mark, which is generally a prerequisite.
Accordingly, there are some peculiar and remarkable facts on both sides of this case, and I am therefore unsure whether this was a case of cybersquatting, or RDNH. From the above facts, it could possibly be considered either by the Panel, so perhaps that is why they ruled "down the middle" by dismissing the complaint, but not finding RDNH. Perhaps the Panel just ruled on the evidence presented to them. In any event, this is definitely a case that serves to demonstrate that a UDRP is not always the best place to resolve a dispute, as discovery, cross-examinations, and awards for RDNH are not available.