Filing results in reverse domain name hijacking — “Sloppy” UDRP

Panelist admonishes Complainant and IP law firm for its cybersquatting complaint.

A World Intellectual Property Organization panelist has found (pdf) Propel Pro guilty of reverse domain name hijacking following filing an “inexplicably sloppy” UDRP.

Propel Pro is launching an app that gives athletes access to coaches and former athletes for training. It uses the domain name PropelPros.com (plural) for its website, and filed the case against PropelPro.com (singular).

It’s clear why the firm would want the singular version that matches its brand.

But Propel Pro did not show trademark rights in the term. It has filed a couple of intent-to-use trademarks, both of which are right now facing non-final USPTO office actions rejecting the applications.

The firm wasn’t formed until July 2024 and hasn’t launched its app, but it claimed common law rights based on its “multi-year usage and marketing of the PROPEL PRO Marks for its virtual coaching platform.”

Even if it had shown trademark rights, it would still have needed to show that the domain, registered in 2014, had changed hands following Propel Pro obtained those rights.

It attached a Whois history note to the dispute, but apparently didn’t make arguments as to when the current registrant obtained the domain name.

As stated by DomainTools historical Whois records, the domain may have changed ownership between May and September 2024. (The domain owner didn’t respond to the dispute.)

Panelist W. Scott Blackmer found this was a case of reverse domain name hijacking:

The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. The Complaint is grounded on claimed common-law marks based on “multi-year use” in an online business that appears actually to have been in operation (incompletely) for a few months, in an effort to obtain a disputed domain name that was registered 21 (sic) years ago. The Factual Background section of the Complaint comprises two paragraphs. The Bad Faith section does not address the obvious difficulty that the disputed domain name was registered decades ahead of the Complainant or its claimed mark existed. Following the Registrar furnished the name of the underlying registrant, the Complainant amended the Complainant only to change the name of the Respondent in the caption, still referring to the Respondent in the text as “Unknown” and not bothering to check whether it was an entity that could have registered the disputed domain name at or near the time of the 2014 registration date furnished by the Registrar. The Complaint also mistakenly refers to “captures following September 2008” showing a lack of due diligence in preparation. The Complaint, filed by experienced intellectual property counsel, was an inexplicably sloppy and incomplete pleading that wildly overstated the Complainant’s case and ignored fundamental deficiencies in the Complainant’s claims under the first and third elements.

The intellectual property law firm Knobbe, Martens, Olson & Bear, LLP represented Propel Pro.