Reverse Domain Name Hijacking Attempt Fails: Check24 Loses Dispute

Panelist found no evidence of targeting, dismissing the reverse domain name hijacking claim.

A significant case has unfolded involving Check24 GmbH, a prominent German company known for its extensive product and service comparison platforms. The company initiated a domain name dispute, alleging reverse domain name hijacking, but ultimately failed to convince the panelist of their claims.

Check24 GmbH officially filed the dispute (PDF) concerning the domain name check24.co.uk. This domain, vital for companies seeking a strong online presence in the United Kingdom, became the center of a legal battle testing the boundaries of domain name ownership and trademark rights.

The legal framework for this dispute falls under Nominet’s Domain Resolution Service (DRS). The DRS dictates that a complainant, in this case Check24, must convincingly demonstrate two critical points: first, that they possess legitimate rights to a trademark that is either identical or strikingly similar to the contested domain name; and second, that the respondent’s registration of the domain constitutes an act of abuse. This second requirement distinguishes the DRS from the widely recognized Uniform Domain Name Dispute Resolution Policy (UDRP). Under the DRS, a domain initially registered in good faith can, over time, be deemed an abusive registration if its use shifts to exploit a trademark or create unfair competition.

However, David Engel, the appointed panelist in this contentious case, decisively ruled against Check24, concluding that the evidence presented did not support the claim of abusive registration. This ruling underscores the importance of demonstrating clear intent and targeted exploitation in domain name disputes.

A crucial aspect of Check24’s case hinged on proving that the domain name registrant specifically targeted the company through the domain registration. This required establishing a direct link between the registrant’s actions and the intent to profit from Check24’s established brand and trademark.

Engel highlighted a significant geographical factor. The registrant, identified as a domain investor, is based in New Zealand. Check24, Engel noted, failed to provide sufficient evidence that the New Zealand-based registrant would have been reasonably aware of Check24’s trademarks, which primarily hold relevance and protection within Europe. While Check24 held an EU trademark for the term “CHECK24” at the time the respondent acquired the domain in 2017, this alone wasn’t enough to establish targeting. Engel elaborated:

The Complainant’s attempt to fix the Respondent with some kind of constructive notice of its existence because he could have conducted a trade mark search against the CHECK24 name, is a stretch at best, and, in any event, does not assist it. The Policy contains no such requirement and DRS decisions recognise no such equitable doctrine.

Furthermore, Engel emphasized the necessity of proving the registrant’s awareness of Check24 at the time of domain acquisition. He added:

If a respondent is to be found to have registered a domain name primarily for the purpose of selling it to the complainant, it is axiomatic that the respondent must have been aware of the complainant’s existence. Contrary to the Complainant’s contention, such awareness is indeed subjective. To suggest otherwise flies in the face of the clear wording of the Policy.

The panelist also challenged Check24’s assertion that “the only purpose of the registration is to take unfair advantage of the Complainant’s reputation and to create leverage for a financial gain.” This statement suggested that the registrant’s sole motivation was to exploit Check24’s brand recognition for monetary benefit.

Engel questioned the validity of this claim, pointing out that the registrant had not directly contacted Check24 with an offer to sell the domain. The domain was simply listed for sale on Saw.com, a platform commonly used for domain name transactions. He further referenced DRS guidelines that acknowledge “Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities.” This distinction is crucial, as simply owning and attempting to sell a domain does not automatically constitute abusive registration.

The respondent, in their defense, stated that they had acquired a substantial portfolio of domain names that either began with the prefix “check” or ended with the suffix “24.” They further maintained that they were not aware of Check24’s existence at the time they acquired the contested domain name. This assertion of unawareness played a significant role in the panelist’s ultimate decision.

Ultimately, Engel concluded that Check24 failed to adequately demonstrate, based on the balance of probabilities, that the respondent was aware of their existence at the time of the domain registration in 2017. This lack of evidence regarding the registrant’s awareness of Check24’s trademark significantly undermined their case.

Engel went further, characterizing Check24’s filing as an abuse of the DRS process. He elaborated:

…In particular, the Complainant not only failed in its Complaint to take account of the legitimacy of domain name dealing, which might perhaps be ascribed to ignorance or incompetence, but when its failure in this regard was identified in the Response, it nonetheless persisted in this submission in its Reply, asserting that “the continued offering of the disputed domain for sale, despite the Complainant’s Rights, fully justifies the Complaint”

Similarly, its contention in the Reply that the Respondent’s registration of many domain names containing CHECK or 24 fell within paragraph 5.1.3 of the Policy, despite the fact that none of those domain names appear to “correspond to well known names or trade marks” (and the Complainant fails to identify any which do), is at best disingenuous and at worst an attempt to mislead the Expert.

This statement highlights Engel’s disapproval of Check24’s arguments, particularly their disregard for the legitimacy of domain name investing and their attempt to broaden the scope of the dispute to include other domain names that were not demonstrably connected to established trademarks. The panelist’s strong rebuke underscores the importance of thorough due diligence and accurate representation of facts in domain name disputes.

The case serves as a reminder that simply owning a trademark similar to a domain name is not sufficient grounds for a successful domain dispute. Complainants must provide compelling evidence of abusive registration, demonstrating that the registrant acted with the specific intent to target the complainant’s brand and profit unfairly from their reputation. Furthermore, the ruling reinforces the legitimacy of domain name investing as a lawful activity, provided it is not conducted with malicious intent or with the aim of exploiting established trademarks. This decision provides valuable guidance for both trademark owners and domain investors navigating the complex landscape of domain name law.