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French firm Mobility SAS attempts reverse domain name hijacking

Reverse Domain Name Hijacking Attempt Fails: A Case Study of NovaGaming.com

Understanding Domain History: A Crucial Element in UDRP Disputes.

Reverse Domain Name Hijacking

A recent decision by a panel of the World Intellectual Property Organization (WIPO) highlights the importance of thorough due diligence when pursuing domain name disputes. Mobility SAS, a company offering Nova Gaming-branded products, was found to have engaged in reverse domain name hijacking in an attempt to acquire the domain name NovaGaming.com.

The Backstory: Mobility SAS and NovaGaming

Mobility SAS was established in 2018 and began offering products under the “Nova Gaming” brand in 2021. Finding that the .com domain name, NovaGaming.com, was already registered, the company opted to use novagaming.tech instead.

In February of the following year, Mobility SAS filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint against the owner of NovaGaming.com. The goal, seemingly, was to “upgrade” their domain name from the .tech extension to the more desirable .com.

The UDRP Complaint: A Misguided Strategy?

The UDRP is a legal mechanism designed to address cases of cybersquatting, where individuals or entities register domain names that are identical or confusingly similar to existing trademarks with the intent to profit from the trademark owner’s reputation. However, it appears Mobility SAS’s strategy was flawed from the outset.

According to the WIPO panel, Mobility SAS argued that they couldn’t afford the price demanded by the current owner of NovaGaming.com and believed they were entitled to the domain through the UDRP process. Panelist Assen Alexiev summarized the complainant’s argument (as documented in the official WIPO decision):

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It states that it is not in a position to offer the minimum price required by the Respondent for the purchase of the disputed domain name, and that due to the technical set up of the Sedo website, the Respondent cannot offer to purchase the disputed domain name at a value closer to the cost of the registration and maintenance of the disputed domain name on an annual basis together with the cost of these proceedings.

This argument, however, overlooked a crucial piece of information: the registration date of NovaGaming.com.

The Fatal Flaw: Ignoring Domain History

NovaGaming.com was registered in 2004 – a full 14 years before Mobility SAS was even founded. In its UDRP filing, Mobility SAS failed to address this critical fact. This oversight proved to be the downfall of their case.

Panelist Alexiev concluded that the complaint was brought in bad faith, leading to a finding of reverse domain name hijacking:

The Complainant is represented by counsel. It alleges that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring its registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant however makes this allegation without addressing at all the fact that the disputed domain name was registered many years before the Complainant and its trademark started to exist. It must have been evident to the Complainant and to its counsel that in such circumstances it is unlikely for the Respondent to have targeted the Complainant with the registration of the disputed domain name, and that the Complaint cannot succeed. The Complainant however filed the Complaint.

Based on the evidence presented, this conclusion is logical and well-supported.

The Importance of Expert Counsel in UDRP Cases

This case serves as a stark reminder of the importance of engaging legal counsel with specific expertise in UDRP proceedings. A lawyer well-versed in domain name law would have likely identified the problematic registration date and advised against pursuing the complaint.

A Missed Opportunity for Due Diligence

Further investigation, using tools such as DomainTools (a service providing historical domain name data), could have potentially revealed that the current registrant of NovaGaming.com acquired the domain after Mobility SAS launched its brand. While this might not have guaranteed a successful outcome for Mobility SAS in the UDRP, it could have significantly altered the landscape of the dispute and potentially avoided the finding of reverse domain name hijacking.

By researching the history of the domain name, it would be easy to determine whether the domain was purchased and owned before or after the company registered its trademark. The complainant’s legal counsel should have discovered and considered this fact before representing their client, and filling the complaint.

Understanding Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (RDNH) is a finding in a UDRP case where the panel determines that the complainant (the party trying to acquire the domain name) has brought the complaint in bad faith. This typically involves situations where the complainant knows or should have known that they cannot win the case under the UDRP criteria but still proceeds with the complaint, often with the intent to harass the domain name owner or force a settlement.

Factors that can contribute to a finding of RDNH include:

  • The complainant’s trademark is generic or descriptive.
  • The domain name was registered long before the complainant’s trademark was established.
  • The complainant fails to present sufficient evidence to support their claims.
  • The complainant makes false or misleading statements to the panel.
  • The complainant’s primary motivation appears to be to acquire the domain name without paying a fair price.

The consequences of being found guilty of RDNH can include damage to the complainant’s reputation and legal costs associated with defending the complaint. In some jurisdictions, the domain name owner may also be able to pursue legal action against the complainant for damages.

Conclusion: The NovaGaming.com Case – A Lesson Learned

The NovaGaming.com case underscores the importance of thorough preparation and expert legal counsel when navigating domain name disputes. Failing to conduct proper due diligence, particularly regarding the history of the domain name, can lead to unfavorable outcomes, including a finding of reverse domain name hijacking. Companies seeking to acquire existing domain names must carefully assess the strength of their legal position and avoid pursuing frivolous or ill-conceived UDRP complaints.

This situation shows that, while domain names are important, it’s necessary to do your research, and find the proper legal counsel before starting any UDRP complaints. Doing this can save you time, legal fees, and the reputation of your company.

AMAR GOUSSU STAUB Selas represented Mobility SAS. The respondent, the owner of NovaGaming.com, did not file a formal response to the complaint.