Rules ITWAY engaged in reverse domain name hijacking — WIPO panel

Firm sought domain name matching its ICOY workplace safety brand.

A World Intellectual Property Organization panelist has found (pdf) that ITWAY S.P.A. attempted to reverse domain name hijack the domain icoy.com.

ITWAY offers a system called ICOY, designed to reduce workplace accidents involving heavy machinery, such as forklifts.

The firm registered the domains icoy.it and icoy.eu in Jun 2019. It launched its ICOY product in 2020.

Unfortunately for the firm, a domain investor purchased the domain icoy.com in 2000, two decades ahead of it launched its product.

ITWAY inquired regarding buying the domain through Sedo, but thought the $22,500 asking price was too much. So it made a misguided attempt to get the domain through UDRP.

The firm made the incorrect assertion that, in cases under the UDRP where the disputed domain name is identical to the complainant’s trademark and the disputed domain name has been used in bad faith, it may not be necessary for the complainant to demonstrate registration of the disputed domain name in bad faith.

Not only is this incorrect, but there is also no indication that the domain was used in bad faith.

Given that the domain was registered well ahead of ITWAY obtained any rights in the mark ICOY, this case was dead on arrival.

Panelist Steven A. Maier wrote:

The Panel finds this case to be to be a clear instance of Reverse Domain Name Hijacking. The Complainant is legally represented and ought to have been well aware that it could not establish registration of the disputed domain name in bad faith where such registration took place some 19 years ahead of the Complainant’s first use of the ICOY mark. It ought to similarly have been aware of the strict application of the conjunctive requirement for both registration and use in bad faith under the third element of the Policy. In addition, the Panel finds there to have been no reasonable grounds to assert that the Respondent has used the disputed domain name in bad faith.

In the view of the Panel, it is reasonable to infer that the Complainant discovered the disputed domain name to be unavailable at the time it registered the icoy.it and icoy.eu domain names in June 2019. It also appears to the Panel that the Complainant has sought to acquire the disputed domain name on a commercial basis since that date, as evidenced for example by its correspondence with Sedo.co.uk in August 2023. The Panel concludes, therefore, that the Complainant issued the present proceeding in the hope of obtaining a transfer of the disputed domain name in circumstances where it did not wish to pay the price demanded by the Respondent for the sale or lease of the disputed domain name. Such conduct constitutes a clear abuse of the UDRP.

Studio Legale Tributario EY represented ITWAY in the dispute.