Supplements firm tries reverse domain name hijacking

Firm has legitimate trademark issue, but not a cybersquatting one.

A supplements firm has been found to have tried reverse hijacking the domain name DecodeAge.com.

U.S. firm Spartacus Brands LLC, which operates a site at CodeAge.com, filed the dispute against Centenarians Life Sciences Pvt Ltd.

Centenarians also sells supplements, and there might be a trademark issue between the firms.

Still, the case did not qualify for a domain transfer under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Notably, the Respondent has a real business and has trademarks in India.

World Intellectual Property Organization panelist Warwick A. Rothnie found that Centenarians has rights or legitimate interests in the domain name.

In finding reverse domain name hijacking, he wrote (pdf):

First, the Complainant was by now engaged in litigation with the Respondent ahead of filing the Complaint. That factor is not necessarily decisive in and of itself.

Secondly, the Complainant was fully aware of the identity of the Respondent and its activities. Still, it made no attempt to address that (counting the Respondent’s activities being located in India) even following the Registrar Verification Response was received and the Center invited the Complainant to submit an amended Complaint.

Thirdly, in particular, it seems highly likely that the Complainant was aware that the Respondent by now had registered trademarks in India corresponding to the disputed domain name as its own application was filed following the Respondent’s application and, if the Indian authorities considered the two marks confusingly similar in the trademark law sense, the Respondent’s trademark would have been raised against it. Still, the Complainant did not disclose those facts.

Fourthly, the Complainant alleged that it had sent “a number of cease and desist letters” to the Respondent but the “Respondent has failed to meaningfully respond to Complainant’s attempts to reach them or to accept service of process.” On a superficial view those allegations conveyed an impression that the Respondent had ignored the Complainant’s demands. In fact, still, the Respondent’s Indian attorney responded shortly following the proceedings were initiated to inform the Complainant that the Respondent had ceased offering its products in the United States. The Complainant’s allegations also suggest that the Respondent has been evading service. Still, it appears to have a registered office and a substantial Internet and social media presence.