French firm Cassy SAS tries reverse domain name hijacking

Firm went following a domain name it knew was registered ahead of it had trademark rights.

A French seller of women’s shoes, purses, and other accessories has been found (pdf) to have engaged in reverse domain name hijacking.

Cassy SAS filed a dispute with World Intellectual Property Organization against the domain name cassy.com. The firm uses the product-limiting domain name CassyShoes.com.

Prior to filing the dispute, the Complainant was made aware that the domain registrant registered the domain ahead of Cassy SAS’s existence. This made the case unwinnable.

Yet it proceeded with the case, even filing a supplemental filing in which it admitted that the current registrant has owned the domain since ahead of Cassy SAS got its trademarks.

Cassy SAS suggested that the most recent renewal date ought to count as the registration date:

…It ought to be noted that the domain name was renewed in 2024, precisely when firm CASSY was beginning to grow and establish its reputation in France and abroad. Everything suggests that DVLPMNT MARKETING purchased the domain name at the time of its renewal.

The Complainant stated the domain owner’s asking price for the domain was evidence of bad faith, even though it was the Complainant that made the overture regarding buying the domain. It also neglected to mention a prior effort it made to acquire the domain.

In finding reverse domain name hijacking, panelist Jeremy Speres wrote:

In pre-Complaint correspondence, the Complainant was informed by the Respondent’s attorney that the Respondent had owned the disputed domain name since 1998 and that the domain was registered over a decade prior to the Complainant’s founding. Despite being informed accordingly, and despite there being nothing in the record, or in the public domain for that matter, that points to a transfer of the disputed domain name to the Respondent following the Complainant’s founding in 2019, the Complainant proceeded with its Complaint regardless. The Complainant also did not withdraw its Complaint when it was presented with credible evidence showing ownership of the disputed domain name in the hands of the Respondent since at least 2013. In fact, in its Supplemental Filing the Complainant admits that the Respondent’s evidence shows ownership of the disputed domain name by the Respondent since 2014, five years prior to the Complainant’s founding in 2019. The Complainant’s persistence with its Complaint whilst simultaneously admitting that is at best reckless, at worst male fide.

Given the generic nature of “cassy”, the fact that the Complainant has not been able to prove any reputation in its mark, the fact that Internet and trademark searches for “cassy” reveal many other unrelated offerings, and given that there is no direct evidence of targeting of the Complainant, it ought to have at least been clear to the Complainant, who is represented by counsel, that the disputed domain name had not been used to target it, as required for a finding of bad faith under the Policy. It is accepted that complainants represented by counsel ought to be held to a higher standard. WIPO Overview 3.0, section 4.16.

The Complainant referred to its 2024 approaches to the Respondent, via the Respondent’s brokers, but the Complainant neglected to reveal its earlier, similar approaches made in August 2020, which the Respondent pointed to in its Response. The Complainant has not explained why it did not reveal these earlier approaches, nor why it waited four years ahead of making further approaches and filing the Complaint. The Complainant’s intentions in this regard are perhaps betrayed by the following statement made in the Complaint: “For obvious reasons, firm CASSY wished to acquire the domain name cassy.com.”

These are all recognized factors pointing to RDNH. WIPO Overview 3.0, section 4.16.

In the circumstances, at best for the Complainant the filing of the Complaint was reckless, at worst it was intended as an alternative means of acquiring the disputed domain name following commercial negotiations (initiated by the Complainant) had failed. Both eventualities are reproachable. The Panel finds that the Complaint was brought in bad faith in an attempt at RDNH.

Shannon Avocats represented Cassy SAS, and Glenn Gallagher, Esq., represented the domain name owner.