October 17, 2016
A clothing company has been found by the WIPO to have engaged in reverse domain name hijacking. The company in question Whispering Smith Limited is owner of several trademarks for “Brave Soul” and runs the “bravesoul.co.uk” and “bravesoul.es” websites.
The aforementioned company filed a UDRP complaint against the third party owner of the domain name “bravesoul.com” citing bad faith registration and trademark infringement.
However, the WIPO noted that as the disputed domain name had been registered in 2001 and the complainant’s earliest corresponding trademark had been filed in 2003, the complainant failed to prove bad faith registration by the Respondent. Since the complainant had no registered trademarks at the time the domain name was registered, the domain name registrant could not be guilty of bad faith registration. Furthermore, as the domain name resolved to a parking page, he could not be guilty of bad faith use.
The WIPO found that as the complainant must have been aware, at the time of filing the complaint that he was unable to prove one of the conditions essential to the UDRP procedure, he most likely filed the complaint in order to deprive the Respondent of his domain name. These facts justified a finding of reverse domain name hijacking. However, apart from reputational damage, the Complainant incurred no other sanctions.