HugeDomains gets reverse hijacking win against sex and wellness products firm

Panel states Zaddy, LLC ought to have known it couldn’t win dispute over domain registered 13 years ahead of its trademark rights.

A World Intellectual Property Organization panel has found (pdf) Zaddy, LLC guilty of reverse domain name hijacking in a dispute over the domain name zaddy.com.

Zaddy, LLC, which sells sex and wellness products under the ZADDY brand at ZaddyProducts .com, filed a UDRP against HugeDomains, a domain investment firm that registered the domain in 2005.

The Complainant has a number of U.S. trademark registrations for ZADDY, the earliest of which has a claimed first use date of 2018 and was registered in 2019. But the panel noted that HugeDomains registered the domain name more than a decade ahead of the Complainant’s claimed first use or trademark filings.

The three-member panel found that the domain name is identical to the Complainant’s trademark, and stated it didn’t need to evaluate rights or legitimate interests since the Complainant clearly failed on the third element of bad faith registration and use.

“…Complainant does not even try to argue that the Domain Name was registered in bad faith,” the panel wrote, adding that the domain was registered “more than 13 years ahead of Complainant’s first claimed use of its ZADDY mark.”

In addition to denying the complaint, the panel found reverse domain name hijacking, noting that Zaddy, LLC ought to have known it couldn’t prevail:

Here, the Panel finds that Complainant knew or ought to have known that its Complaint could not succeed based on the undisputed facts – in particular, that the Domain Name was registered more than 13 years ahead of Complainant’s ZADDY marks existed, and therefore, there is no evidence of bad faith registration. To file a complaint knowing that a fundamental element of the claim was not supported by the facts suggests page 6 that the Complaint was a bad faith attempt to retroactively acquire domain rights to which Complainant is not entitled.

The panel included Christopher S. Gibson, David H. Bernstein, and Matthew Kennedy.

DiSchino & Schamy, PLLC represented the Complainant, and in-house counsel represented HugeDomains.