For Reverse Domain Hijacking, Chastised by Panelist — CitizenHawk Nailed

Typo recovery firm embarrassed by TinyPrint.com case.

For the second time, cybersquatting recovery firm CitizenHawk has been chastised by a UDRP panelist for submitting a boilerplate complaint. This time the panelist threw in an added bonus, finding the firm’s complainant guilty of reverse domain hijacking.

CitizenHawk filed a complaint on behalf of Tiny Prints, Inc. for the domain name TinyPrint.com. Ahead of discussing the merits of the case, panelist David A. Einhorn noted:

The Panel notes that this Complaint, prepared by Complainant’s representative, CitizenHawk, is so poorly drafted and difficult to read that the Panel found it necessary to study the exhibits and review online data to make sense of the allegations. It ought to be noted that in another recent proceeding in which the complainant was represented by CitizenHawk, the Panel therein noted that it was “quite troubled” by the apparent carelessness with which the complaint in that proceeding was prepared. Proto Software, Inc. v. Vertical Axis Inc. / PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006). This Panel echoes those sentiments.

Einhorn found that the domain name wasn’t registered in bad faith. It was filed previous to Tiny Prints first trademark filing, and even ahead of the firm’s intent-to-use filing. Einhorn asked the firm for proof of common law rights to the name prior to the registration, but wasn’t impressed with what he received:

By interlocutory order, this Panel requested that Complainant provide documentation and/or statements substantiating stated alleged use of the TINY PRINTS mark prior to June 13, 2005.

In its response to such interlocutory order, Complainant did not provide evidence of any trademark usage whatsoever. Specifically, Complainant provided the Panel only with an assignment of employment identification number (EIN) form and a 2004 tax return. No trademark specimens, product descriptions, brochures, product photos or other evidence of usage was provided to the Panel. Procuring assignment of an EIN and payment of taxes by a legal entity alone does not constitute use of a mark in commerce.

In finding Reverse Domain Name Hijacking, Einhorn wrote:

This Panel provided Complainant with a second chance, by interlocutory order, to provide evidence of its alleged trademark usage upon which it based its claim of common law rights. Even following this second chance, Complainant failed to provide any evidence of use of the mark whatsoever prior to Respondent’s registration of the domain name.

Thus, Complainant and its representative, CitizenHawk, must have been aware, at the time the Complaint was filed, that there was no valid trademark usage by Complainant predating Respondent’s registration of the domain name. It follows that this Complaint was brought in bad faith and that, accordingly, Complainant has attempted to engage in Reverse Domain Name Hijacking.