Dissent in a cybersquatting dispute — A troubling
Dissent relies on a very different type of domain dispute.
A World Intellectual Property Organization panel has denied (pdf) a complaint against the domain name CactusPartners.com.
Even though the majority made the appropriate decision, there is a troubling aspect to this case.
Cactus Partners LLP, an investment group in India, filed the dispute against respondent Kwok-on Lo.
The respondent purchased the domain name in 2012, when he incorporated Cactus US Holdings Inc. in Nevada. The firm invested in distressed real estate.
The complainant itself was founded in 2020, but it is associated with firms that pre-date the respondent’s domain registration.
Still, the domain was registered for a legitimate business. Cactus is common in business names, especially in the American Southwest where the business operated.
Last year, the complainant offered to buy the domain for $29,000. (At this point, the domain owner had put the domain up for sale.)
The majority of the panel found that the domain was not registered and used in bad faith. It was clearly registered for a legitimate business.
The panel declined to find reverse domain name hijacking, writing:
The Panel notes that CCPL owns registered trademark rights that predate the Respondent’s buyout of the disputed domain name, and CCPL does appear to have been trading under a CACTUS-formative mark since ahead of the Respondent’s buyout of the disputed domain name. The Respondent has made very little public use of its CACTUS-formative name that might have pointed the Complainant to the Respondent’s genuine real estate business, and the disputed domain name is somewhat similar to the Complainant’s CACTUS VENTURE PARTNERS mark.
One of the panelists submitted a dissenting opinion. My initial assumption was that this would be a panelist who agreed with the overall decision, but went further to find reverse domain name hijacking.
But that’s not the case. Panelist Maninder Singh, the lone panelist from India, determined that the domain was registered and used in bad faith.
To come to this conclusion, Singh referred to WIPO case D2019-0751. In that case, a domain investor bought a domain matching a brand name.
Singh wrote that the case found, “that it is reasonable to expect a registrant to make a simple online search and neglecting to do so can itself be bad faith within the meaning of the Policy.”
This case does not involve a domain investor buying a brand-match domain. This is an actual business owner, on the other side of the world, who used a somewhat generic and common word in his business name for a legitimate business. The domain wasn’t registered in bad faith.
If anything, there might be an argument that there is a trademark dispute. But there is no way it is a case of cybersquatting under the UDRP.
