IT firm tries reverse domain name hijacking

CDW did not show that registrant was targeting it with domain registration.

A World Intellectual Property Organization panelist has found (pdf) that technology firm CDW (NASDAQ: CDW) tried to reverse hijack the domain name cdw.au.

The case shows the difficulty of winning a UDRP cybersquatting claim for a generic or short brand name.

An Australian domain investor with a portfolio heavy in car rental and insurance domains registered the domain. The investor noted that the term “CDW” is used in the car rental business for “Collision Damage Waiver”, which is a type of insurance offered by rental firms.

In order to win the dispute for the three-letter domain, CDW needed to show some type of targeting, such as relevant pay-per-click links or offering the domain for sale to the firm.

Panelist Sebastian M.W. Hughes found there was no such targeting in this case.

Some three-letter acronyms are big enough to potentially flip this burden in the Complaiant’s favor. IBM comes to mind.

In finding reverse domain name hijacking, Hughes wrote:

The Panel considers there is force in the Respondent’s submissions that the Complainant, being represented by experienced counsel, ought not to have commenced this proceeding absent any evidence that the Respondent had knowledge of, and was targeting, the Complainant and its Trade Mark at the time of registration of the disputed domain name.

The Complainant’s allegations of bad faith registration or use are based on the bare assertion that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or a competitor of the Complainant – an assertion which is contradicted by the evidence of the Respondent’s passive holding of the disputed domain name. Further, no submissions were put forward by the Complainant addressing how the Respondent’s passive use of the disputed domain name might otherwise support a finding of bad faith.

CDW didn’t do itself any favors by pointing out that a reverse domain ownership search showed that the Respondent held at least 875 domains, without showing that any of them were related to common trademarks.

Actuate IP represented CDW, and the Respondent was self-represented.