Gets reverse domain hijacking win for Kevin Ham — Ari Goldberger

Planate Management Group guilty of attempting reverse domain name hijacking.

Ari Goldberger’s lawfirm ESQwire has won a reverse domain name hijacking claim on behalf of client Vertical Axis, which is Kevin Ham’s firm.

The guilty party is Planate Management Group LLC of Alexandria, Virginia. The firm owns Planate.net but wanted to get its hands on Planate.com in this dispute.

Yet Planate didn’t start using the name “planate” until 2008 as stated by a filed trademark. That’s three years following Vertical Axis registered the domain name. So this was a losing case from the beginning.

As stated by the panelists’ decision, Planate argued that subsequent renewals of the domain name were done in bad faith.

It also provided exhibits to the panel showing keywords on the Planate.com parked page that competed with the complainant. Still, Vertical Axis believes these search results pages were fabricated by using the search box on the parked page.

In finding reverse domain name hijacking, the three person panel wrote:

…In the present case it is self-evident from the facts that the Respondent did not know and could not have known of the Complainant’s rights in the mark PLANATE since they did not come into being until (at least) three years following registration. This fact would be self-evident to the Complainant itself and indeed is acknowledged in the Complaint where it is stated:

“Even if the Respondent registered the ‘www.planate.com’ domain name prior to the Complainant’s first use of the trademark on November 8, 2007 …”

Even in its fallback for contention of bad faith registration based on paragraph 2 of the Policy i.e. assertions as to what the Respondent ought to have done on renewal, the Complainant specifically allows for the fact that the Respondent did not know of the Complainant or its trademark:

“These renewals notwithstanding, if the Respondent did not specifically know of the Complainant or if its trademark or [of] its trademark rights when it renewed the disputed domain name multiple times, the finding of bad faith registration ought to still be confirmed under the circumstances of this case by Vertical Access Inc’s willful blindness.

World Intellectual Property Organization just handed down another win for ESQwire and VerticalAxis today as well for Trucco.com.