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Hopscotch Wins UDRP Case, No Reverse Domain Name Hijacking Found

Domain Name Dispute: PR Firm Fails to Acquire Hopscotch.com Through UDRP

In a recent domain name dispute case, a three-member panel at the World Intellectual Property Organization (WIPO) has denied a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint filed for the domain name Hopscotch.com. While the panel sided with the domain name owner, it stopped short of finding the complainant guilty of reverse domain name hijacking.

The case highlights the challenges companies face when attempting to acquire generic domain names already registered by others and the importance of demonstrating bad faith registration and use when filing a UDRP complaint.

Hopscotch Game

Background: The Acquisition Attempt and Subsequent UDRP Filing

Joseph Lee, the current owner of Hopscotch.com, acquired the domain name in 2010 for over $10,000. At the time, Lee envisioned developing a website dedicated to games, potentially leveraging the playful and universally recognizable nature of the word “hopscotch.” While the envisioned game site never materialized, Lee retained ownership of the domain.

The complainant in the case, Hopscotch Group, is a Paris-based public relations (PR) company. Recognizing the potential value of Hopscotch.com for their brand, the company sought to acquire the domain. They already operate using the domain name hopscotchgroupe.com and own other domain extensions such as Hopscotch.us and Hopscotch.fr, demonstrating their investment in the “Hopscotch” brand.

According to the details presented in the UDRP case, Hopscotch Group offered Lee $30,000 for Hopscotch.com. However, the parties failed to reach an agreement, leading Hopscotch Group to file a UDRP complaint with WIPO. A UDRP complaint is a legal mechanism used to resolve disputes over domain names when the complainant believes the domain name was registered in bad faith and infringes on their trademark or service mark.

The UDRP Panel’s Decision: No Bad Faith Registration

The WIPO panel, after reviewing the evidence and arguments presented by both sides, ruled in favor of the domain name owner, Joseph Lee. The panel concluded that Hopscotch Group had failed to demonstrate that Lee registered Hopscotch.com in bad faith, a key requirement for a successful UDRP complaint.

The panel acknowledged that Lee had not actively developed a game website on the domain. However, they emphasized that it is perfectly legitimate to acquire a generic domain name with the intention of selling it later. This practice, sometimes referred to as “domain investing,” is a recognized and accepted part of the domain name ecosystem, as long as the domain was not registered with the primary intent of profiting from the trademark of another.

The panel’s decision highlights the difficulty in proving bad faith registration, especially when dealing with common or generic domain names. The complainant must demonstrate that the domain name was registered specifically to target their trademark and that the registrant is using the domain to profit unfairly from their brand reputation.

Reverse Domain Name Hijacking: A Claim Denied

While the panel ruled against Hopscotch Group, it also declined to find them guilty of reverse domain name hijacking (RDNH). RDNH occurs when a complainant brings a UDRP claim in bad faith, attempting to unfairly deprive the domain name owner of their legitimate rights. This can involve submitting false evidence, knowingly making baseless legal arguments, or engaging in other abusive tactics.

Despite the weakness of Hopscotch Group’s case, the panel determined that their actions did not constitute RDNH. The panel reasoned that several factors could have led Hopscotch Group to believe they had a reasonable chance of success, including:

  • The fact that Hopscotch Group is a substantial organization with a significant brand presence.
  • The direct correspondence between the domain name (Hopscotch.com) and the company’s name.
  • The fact that the domain name was not being actively used for a website.
  • The substantial sum of money requested by the respondent for the domain name.

The panel summarized its reasoning as follows:

“The Panel considers the Complainant’s case to be relatively weak, insofar as it was based on an ordinary dictionary word. However, the fact that the Complainant was a very substantial organization, the Domain Name corresponded to its name, the Domain Name was not being used by the Respondent, and that he asked for a substantial sum for it when approached are all factors which mean that, in the Panel’s view, the Complainant could genuinely form a view that its Complaint might have had some prospect of success, depending on the evidence and what the Respondent said.”

In essence, the panel concluded that while the case was not strong, Hopscotch Group’s belief in its potential success was not entirely unreasonable, given the circumstances. The high price demanded by the domain owner, in particular, might have led the company to believe that the owner was attempting to unfairly profit from their brand.

Key Takeaways from the Hopscotch.com UDRP Case

The Hopscotch.com UDRP case offers several important lessons for companies and domain name owners alike:

  • Generic Domain Names: Acquiring a generic domain name can be challenging and expensive. While UDRP can be a useful tool, it’s often difficult to prove bad faith registration when dealing with common words.
  • Due Diligence: Before filing a UDRP complaint, conduct thorough due diligence to assess the strength of your case. Consider factors such as the generic nature of the domain name, the registrant’s intent, and any evidence of bad faith use.
  • Negotiation: Attempting to negotiate a purchase price with the domain name owner is often a more effective strategy than resorting to legal action. Be prepared to offer a fair price based on the domain’s potential value.
  • Reverse Domain Name Hijacking: Be cautious when filing UDRP complaints. If the case is weak or lacks merit, you risk being found guilty of reverse domain name hijacking, which can have negative consequences.
  • Domain Investing: Owning generic domain names is legitimate. Legitimate domain investors are within their rights to seek fair market value for their assets.

Ultimately, the Hopscotch.com case serves as a reminder that domain name disputes can be complex and fact-specific. Companies seeking to acquire domain names should carefully weigh their options and pursue strategies that are both legally sound and commercially reasonable. They should also consider alternative branding strategies to ensure online success, such as focusing on a unique brandable domain name or investing in strong SEO and social media presence to increase traffic to their existing website.