New Forests Asset Management Pty Limited of North Sydney, Australia, represented by Clayton Utz Solicitors, Australia was just found guilty of reverse domain name hijacking (RDNH) on the domain name newforests.com after offering just $4,000 to by the domain
The company owns the domain name newforests.com.au which was registered in June 2006
The domain name NewForests.com was registered back on January 28, 1999
The three member panel of Luca Barbero, David Stone and Tony Willoughby found Reverse Domain Name Hijacking:
“In the case at hand, the Panel considers that the Complainant is represented by a Counsel who knew or should have known, at the time of the filing of the Complaint, that it could not prove at least one of the essential elements required by the Policy, namely the Respondent’s bad faith registration, as the Respondent’s registration of the disputed domain name predates the creation and first use of the Complainant’s trademark. Moreover, the Complaint does not even address the disparity in dates, merely mentioning that the trademark was used by the Complainant’s predecessor-in-title since 2000, i.e., one year after the registration of the disputed domain name.”
Here are the highlights:
The Complainant states that its company was founded in 2005 and offers institutional investors targeted opportunities in the Asia-Pacific region and the United States of America. It claims to have over AUD 2.5 billion in assets under management, including timber plantations, rural land and conservation investments related to ecosystem restoration and protection.
The Complainant claims that the trademark NEW FORESTS has been used by its predecessor-in-title since 2000 and by the Complainant since July 2005 and that, as a result of the significant use made by the Complainant of the trademark NEW FORESTS, it has built up goodwill, reputation and common law rights in relation to the trademark NEW FORESTS over the years, in Australia and in a range of other jurisdictions.
– in the domain name , owned by the Complainant’s parent company New Forests Pty Ltd, since as early as June 2006;
The Complainant informs the Panel that it made an offer to purchase the disputed domain name from the Respondent for the amount of $4,000 but it was rejected on the basis that the offer was too low, and that the Respondent indicated it would consider an offer of at least $88,000. As an alternative option, the Respondent proposed licensing exclusive use of the disputed domain name for $2,000 per month for a term of 48 months.
The Complainant also states that a subsequent, anonymous, offer to purchase the disputed domain name from the Respondent for the amount of USD 1,000 was made by the Complainant’s solicitors on July 15, 2015, but was rejected by the Respondent since it was considered too low.
In view of the above, the Complainant concludes that the Respondent registered the disputed domain name in bad faith and that there is no bona fide use of the disputed domain name as the Respondent acquired it for the sole purpose of selling or leasing it to third parties and the price requested is excessive and exceeding the out-of-pocket costs related to the disputed domain name.
In order to successfully establish rights in a trademark, a complainant can assert common law rights or unregistered trademark rights, substantiating its claim with adequate evidence to show that the name on which it relies has become a distinctive identifier associated with the complainant or its goods or services.
In the case at hand, based on the statements submitted by the Complainant and the supporting documents attached to the Complaint as highlighted in section 5A, the Panel finds that, for the purpose of this proceeding, the Complainant has established common law rights in the trademark NEW FORESTS for real assets investments in Australia.
The Panel notes that most of the relevant material submitted, such as press releases, brochures and reports are dated in the years 2014 or 2015, although they mention that the first use of the mark by the Complainant dates back to January 2005.
As mentioned in the earlier paragraphs, the disputed domain name was registered by the Respondent on January 28, 1999.
The Complainant stated that the trademark NEW FORESTS has been used by the Complainant since 2005 and by its predecessor-in-title since 2000. The Complainant argues that the Respondent registered the disputed domain name in bad faith as the disputed domain name is offered for sale, the correspondent web site is unconnected to New Forest horses, the web site content has changed from time to time and the Respondent rejected the Complainant’s offer to purchase the disputed domain name.
The Panel finds that the Complainant has failed to demonstrate how the Respondent could have had knowledge of the Complainant and its trademark at the time of the registration of the disputed domain name since, according to the documents and statements submitted by the Complainant, both the Complainant and its predecessor-in-title did not even exist and the trademark was not yet in use at that time.
Moreover, it is not as if there is anything in the evidence supplied by the Complainant to demonstrate that the Respondent might have had the Complainant in mind at any stage prior to the Complainant’s first attempt to purchase the disputed domain name from the Respondent.
In the circumstances of this case, the Panel finds that the Respondent’s request, in reply to the Complainant’s unsolicited inquiry, of an amount over the out-of-pocket costs for transferring the disputed domain name, is not sufficient to demonstrate that the Respondent registered the disputed domain name in bad faith with the intention to sell it to the Complainant. In the absence of any evidence to suggest that the Respondent registered the disputed the domain name for that purpose, the sale price sought by the Respondent is of no relevance however excessive it might seem to be.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used by the Respondent in bad faith.
Reverse Domain Name Hijacking
In the case at hand, the Panel considers that the Complainant is represented by a Counsel who knew or should have known, at the time of the filing of the Complaint, that it could not prove at least one of the essential elements required by the Policy, namely the Respondent’s bad faith registration, as the Respondent’s registration of the disputed domain name predates the creation and first use of the Complainant’s trademark. Moreover, the Complaint does not even address the disparity in dates, merely mentioning that the trademark was used by the Complainant’s predecessor-in-title since 2000, i.e., one year after the registration of the disputed domain name.
Furthermore, there is no indication, also in the pre-complaint correspondence exchanged between the Parties, that the Respondent might have expressly intended to target the Complainant’s trademark, and it appears that the Complaint was filed in an attempt to obtain the transfer of the disputed domain name from the Panel after the Complainant’s negotiations with the Respondent were unsuccessful.
In view of the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
