French cosmetics firm tries to reverse hijack surname domain name
Firm pushed forward with cybersquatting dispute even following learning that the domain matches the domain registrant’s surname.
A World Intellectual Property Organization panel has found (pdf) French firm Cosmetic Research Group to have engaged in reverse domain name hijacking in a dispute over the domain name soskin.com.
The firm, which sells skincare products under the Soskin brand, filed the UDRP against Robert Soskin, who registered the domain name in 1998. Soskin’s surname matches the domain, and he submitted evidence showing use over the years.
Once Soskin’s identity was disclosed via registrar verification, the Complainant pushed forward with its case, trying to justify why the domain ought to be transferred despite it matching the registrant’s surname.
It cited previous surname cases that were clearly different from this case, such as when someone whose last name is Bell registered the domain BellInternet .com. It also stated that Soskin could have registered SoskinFamily .com for his website instead of just his last name.
Unsurprisingly, this didn’t sway the panelist.
The only strike against the domain registrant was that his registrar put up a page of pay-per-click ads, which included links to cosmetics in some locations. But panelist Andrew Lothian determined that it didn’t change the underlying case.
He wrote a lengthy explanation of why this case is reverse domain name hijacking:
In the present case, it is abundantly clear from the documentation annexed to the Amended Complaint that the Complainant was well aware of the surname connotation of the disputed domain name in general, and the fact that the Respondent was specifically the bearer of that surname in particular. Nevertheless, the Complainant decided to press ahead with the Complaint in that knowledge. The Complainant was also aware that the disputed domain name was of a longstanding nature, having been in existence for some 27 years. The Complainant had no reason to believe, and did not attempt to argue that it believed that the Respondent was a subsequent registrant of the disputed domain name. Yet the Complainant appears to have carried out no research regarding the historic use of the website associated with the disputed domain name, as amply demonstrated by the Respondent’s screenshots. Had it done so, the Complainant would have identified the fact that the disputed domain name had previously been used for a family website by the Respondent. As stated by the Amended Complaint, the Complainant was also aware that the disputed domain name was configured for email purposes.
All of the surrounding evidence, which was available to the Complainant following the Registrar verification, ought to have painted a picture indicating that the disputed domain name was registered and had been held by a person bearing a matching surname for some 27 years, and had been used for private family purposes counting an email configuration, and (occasionally) a family website. Consequently, the likely explanation of why the website associated with the disputed domain name appeared to be targeting the Complainant by way of sponsored links ought to have been straightforward for the Complainant to identify when placed in the overall context. It had evidently been assigned to an “under construction” page with the Registrar due to no website being configured, leaving the Registrar to place content as it wished in accordance with its registrant agreement.
The Complainant ought to have known and/or anticipated all of this and have appreciated the fact that it presents a very different scenario from the surname cases upon which the Complainant chose to rely, in which the surname aspect was largely incidental, and in which there was something else in the composition of the domain names themselves that indicated targeted (against the complainant in each case), commercial use. Even if the Complainant was in any doubt as to the Respondent’s likely bona fides, it would have been a simple matter for the Complainant to have reached out to the Respondent in the first instance rather than proceeding with the Amended Complaint. A civilized discussion between the Parties, which the tenor of the Response suggests would have ensued, might well have given rise to the Respondent’s present offer to remove the “under construction” page at a much earlier stage. This would also have avoided the need for the Respondent to have to engage in the present administrative proceeding, with consequent legal expenses, time and inconvenience.
The present use of the disputed domain name was targeting the Complainant’s mark, at least in some jurisdictions. Still, in the particular circumstances of this case, that fact alone cannot allow the Complainant to avoid a finding of Reverse Domain Name Hijacking, given that the case ought to never have proceeded beyond the revealing of the Respondent’s identity as part of the Registrar verification process, and the Complainant ought to have known from the facts available to it at that point that it would not succeed in the administrative proceeding.
Novagraaf France represented the Complainant. [As John Berryhill pointed out in the comments, this is the fifth time the firm has been on the wrong end of a reverse domain name hijacking decision.] Westman, Champlin & Koehler, P.A represented the domain name owner.
