201806.15

Viking.com or the saga of a raid lost in advance

A UDRP decision rendered by WIPO arbitration center the 23rd of February 2018 saw the complaint of Aurelius RHO GTM Development Limited regarding viking.com, whose registrant was Office Depot Inc, being rejected and qualified as “Reverse Domain Name Hijacking” (RDNH).
What is RDNH ? A company filing a UDRP complaint with deficient legal grounds with regards to UDRP rules might see the complaint qualified of of RDNH by the Panelist(s), upon demand by the Respondent.
In practice, at the UDRP procedure stage, this qualification amounts to nothing more than a “wall of shame” for the person filing the complaint (or its counsel!). One can imagine, however, that the concerned decision might be included to a case, in a possible future action.
Let’s go back to the UDRP decision. In 2016, the two parties conclude an agreement in which Aurelius RHO GTM Development acquire the Europe part of the “VIKING” business of Office Depot. When the agreement was signed, viking.com had been registered and used by Office Depot for more than 15 years. This domain name was not included in the agreement.
In 2017, Aurelius RHO GTM Development filed a UDRP complaint asking for the transfer of viking.com, notably basing its claims on a “Wrong Pockets” clause of the 2016 agreement which provided the transfer to the buyer of any European IP asset that would have been “forgotten” in the agreement.
Without dwelling on the details of the case, several elements should have alerted Aurelius RHO GTM Development at the early stage of the consideration of a UDRP complaint:
  • The registration of viking.com by Office Depot predated the acquisition of VIKING Trademark registrations by Aurelius RHO GTM Development, which rules out a registration of Viking.com in bad faith;
  • Office Depot held “VIKING” trademarks in the rest of the world and redirected viking.com toward a page of officedepot.com. Under those circumstances, finding an absence of rights or legitimate interests according to the UDRP rules was unlikely.
  • The UDRP has been created to address cybersquatting, not contract litigation. As Viking.com was not assigned in the 2016 agreement between the two parties, the interpretation of the “Wrong pockets” provision fell under the jurisdiction of a court.
Without surprise and without prejudice of the arguments that Aurelius RHO GTM Development might develop before a relevant court, the complaint was flatly denied by the tree member Panel of the WIPO arbitration center.
By attempting to reclaim viking.com by a UDRP, Aurelius RHO GTM Development struck itself in the foot with an axe.
Since the UDRP decision, the domain name viking.com appears to have been sold by Office Depot to a tourism company based in Canada.
It is advised to get help from an experimented counsel when a UDRP complaint is considered. The IP Twins team, composed of IP lawyers experienced in proceedings related to domain names (UDRP, URS…), is at your disposal to assist you in this field.
Beyond the UDRP proceeding, this decision also reminds that in the event of an assignment or acquisition of a business, a precise assessment and delimitation of the assigned assets is very important to prevent future litigation. It is particularly the case when high-value domain names such as viking.com are susceptible to be included in the agreement.
Our team as well as our dedicated solutions are at your disposal to perform audits or domain name portfolios reconstitutions, very useful in case of an assignment/acquisition of business(es).