Consumer products giant registered domains before fragrance company existed.
A World Intellectual Property Organization (WIPO) panelist has ruled against an attempt by a fragrance company to seize two domain names from Procter & Gamble (P&G). The decision resolves a dispute over the domains ScentStories.com and ScentStory.com, which P&G registered long before the fragrance company existed.
The complainant, Red Matter Holdings Inc., doing business as MiN NEW YORK, initiated the proceeding after P&G retained the domains in 2004. At the time, P&G used them as part of an extension of its Febreze air freshener line for a scent disk product that delivered different fragrances at set intervals. P&G discontinued the scent disk product in 2008.
MiN NEW YORK’s trademark filings and company existence post-date P&G’s original registration and commercial use of the ScentStories domains. In its complaint, the fragrance company alleged that the domain registrations were renewed in bad faith and sought transfer under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
The WIPO panelist, Scott Blackmer, determined that the evidence did not support a finding of bad faith registration or use by P&G. The decision emphasized the timing of registrations and the prior commercial use by the respondent, concluding that the domains were not acquired or retained in bad faith.
The Panel notes in this case that the Complainant is not represented independently by legal counsel, and the Complainant’s president, who acts as its representative, is not listed as a member of the bar of Nevada or New York. Nevertheless, the Complaint acknowledges the apparent difficulty where both disputed domain names pre-date the Complainant’s trademark applications by many years. The Center makes available WIPO Overview 3.1 as a resource, which plainly addresses the timing issue, yet the Complaint cites no authority for the bald assertion that “this temporal sequence does not preclude the UDRP claims at issue”. Moreover, the Complainant asserts bad faith because the Respondent allegedly failed to reply to the Complainant’s communications before filing UDRP complaints. The Respondent denies that any such communications occurred, and the Complainant offers no proof of them.
Based on those facts, the panelist found the complaint to be an attempt at reverse domain name hijacking (RDNH). Reverse domain name hijacking is a finding made when a complainant brings a UDRP case in bad faith, typically where the complainant knows—or should know—that the domain was legitimately registered or used by the respondent prior to the complainant’s own rights.
The ruling noted the clear chronological gap between P&G’s domain registrations and the complainant’s later trademark applications and company formation. It also pointed out the lack of evidence for the complainant’s claim that P&G ignored pre-filing communications. In short, the record showed prior legitimate commercial use and no persuasive proof of bad faith renewal or retention.
MiN NEW YORK is no stranger to notable domain holdings; the company operates its site under the short, high-value domain min.com. Meanwhile, P&G was represented in the dispute by Studio Barbero S.p.A., which argued that the domains were legitimately registered for a genuine product line and therefore not subject to transfer.
This decision reinforces the importance of chronology and demonstrable commercial use in UDRP cases. When a respondent can show prior registration and bona fide use of a domain name, a complainant faces a significant burden to demonstrate registration or use in bad faith. The panel’s RDNH finding serves as a warning against pursuing domain complaints that ignore clear documentary timelines and established precedent.
For brand owners and domain holders alike, the case underscores the need to review registration history and evidentiary support carefully before initiating UDRP actions. Robust documentation of first use, marketing, and product timelines can be decisive when domain ownership predates a challenger’s rights.