WIPO panel finds reverse domain name hijacking in dispute over domain acquired during .app early access
A World Intellectual Property Organization (WIPO) panelist has determined that Norman Ortiz, CEO of app-building platform iGenApps, engaged in reverse domain name hijacking (RDNH) in a dispute over the domain com.app. The decision addresses how the domain was acquired during the early access phase of the .app top-level domain and whether the complainant had valid trademark rights or other grounds to challenge the registrant.
Tong Zekun registered the domain in May 2018 during .app’s early access launch. iGenApps provides third-level domains under a number of parent zones, including com-in.app and the internationalized cõm.app, and Ortiz claimed he had tried to secure com.app earlier, during the sunrise period for .app. Ortiz’s position relied on a trademark application for com.app that was filed on an intent-to-use basis, but the application did not mature into active use until a statement of use was filed in March 2019.
The trademark filings themselves contained problems. Ortiz’s initial specimen did not actually show the text “com.app,” resulting in an initial refusal. That, combined with the timeline of registration and use, proved important in the panel’s assessment of whether the respondent had acted in bad faith or whether the complainant had rights sufficient to prevail under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Panelist Matthew Kennedy concluded that the complainant failed to show the domain was registered and used in bad faith and that the complaint amounted to reverse domain name hijacking. Kennedy cited several factors in reaching this conclusion, including:
- The complainant’s failure to disclose a prior attempt to purchase the domain for $5,000.
- Knowledge that the complainant lacked trademark rights at the time the disputed domain was registered, that commercial use of the mark began later, and that the respondent could not be expected to have constructive notice of a pending trademark application.
- Absence of evidence that the respondent targeted the complainant’s mark.
- Warnings received about weaknesses in the complaint before it was filed, which the complainant apparently disregarded.
Kennedy also noted that the complainant’s statement of use filed with the United States Patent and Trademark Office described services as “Domain registry operator services” and showed that the complainant had been offering pre-registrations for “.com.app” subdomains as early as March 6, 2019, despite not controlling the disputed com.app domain. The panel observed that preferring to use the domain more effectively than the registrant does not justify a UDRP complaint.
In light of these findings, the panel determined that the UDRP complaint was brought in bad faith and declared it an instance of reverse domain name hijacking. Both parties represented themselves in the proceedings.