Marchex represented by John Berryhill got a finding of Reverse Domain Name Hijacking (RDNH) on the domain name petexpress.com, in what could be the longest complaint and certainly the longest response to a complaint I have ever read.
The domain name was acquired by Marchex back in 2004 as part of the $165 million dollar acquisition of Ultimate Search. The domain was registered in 2001 by Ultimate Search
The complaint was brought by Airpet Animal Transport, Inc which said it got a federally registered trademark since 2009 and a had a common law trademark going back to 1979 although the company was apparently 1st formed in 2005.
The complaint and response contained quite a bit of nasty business so while we typically only point out the panels finding of facts and conclusions we think its worth noting some of the language used by both the complainant and the domain holder
For the complainant’s part they called Marchex a profession Cybersqautter:
“As a professional Cybersquatter, Respondent is no stranger to UDRP proceedings.”
“In a similar case involving Respondent, the Panel held that:
For its part the domain holder points out that the Complainant Did Not Exist Prior To April 2005
“We must first pause at the very first sentence of the “Factual and Legal Contentions” of the Complaint, which was certified to be “complete” by the Complainant:
Complainant has significant common law rights in the mark PET EXPRESS by virtue of its continuoususe of the mark in commerce since 1978 to provide pet transportation services under the PET EXPRESS mark.”
The Complaint is rife with assertions of similar import, such as:
Complainant has used< the PET EXPRESS mark in connection with pet transportation services since 1978.”
"These statements, in the form set forth, and annotated above to emphasize the subject-verb correspondence, are categorically false. "
"The Complainant in this Proceeding is Airpet Express Inc., identified in the Complainant’s recently-issued federal trademark registration as a corporation of the State of California. "
"According to the California Secretary of State, Complainant was formed on April 11, 2005. "
"The Complainant was, most assuredly, not doing anything “since 1978”. "
"Nowhere does the Complaint claim any connection with a predecessor in interest in relation to the alleged mark, and nowhere does the Complaint refer to or show an assignment of such alleged rights from a predecessor in interest.
"Knowing full well that it did not exist until 2005, the Complainant has certified the Complaint here to be “complete and accurate”, while it includes dozens of statements which are simply untrue in relation to activities which are stated to have been conducted by the Complainant, and no other, prior to April 2005."
"While the Complainant may have believed it to be in some manner “convenient” to omit this basic information, the fact is that with respect to any activities alleged to have occurred before 2005, we are left with no clue whatsoever who engaged in them and why the Complainant may seek, in the shortened supplemental response period, to attempt to explain the clearly and objectively misleading statements throughout the Complaint which allege the Complainant to have been conducting activities before its own existence. "
"Were these activities conducted by others? Who were they? When and how did they assign their claimed rights to the Complainant? How were those others organized, and on what basis is such an assignment – not of record here – to be considered effective? Was this claimed goodwill purchased or licensed? Is it still licensed? Does the Complainant actually own such rights?""
"We certainly have no idea, due to the Complainant’s obvious and deliberate decision to make statements which are objectively false, in a filing which is, by any reasonable measure, not “complete” with respect to critical facts concerning these alleged activities."
"Hence, for the purpose of preparing a somewhat comprehensible Response, it must first be noted that the Respondent is not willing to take on faith whatever the Complainant may throw together and submit under Forum Supplemental Rule 7 to attempt to paper over this factual gap, of which the Complainant could not have been unaware when it filed the Complaint and certified it to be “complete and accurate”.…
