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If You Lie About Your Trademark, That Should Automatically Be Reverse Domain Hijacking

Posted on the 20 October 2014 by Worldwide @thedomains

Eric Levy of New York just lost his attempt to grab the generic domain name yourneighborhood.com in a UDRP, based off a trademark for YOURNEIGHBORHOOD LOVE WHERE YOU LIVE, registered on December 10, 2013.

The domain name YourNeighborhood.com was first registered on November 25, 1998

The one member panelist should have found Reverse Domain Name Hijacking (RDNH) since he found the complainant lied about the trademark he held and though the case out immediately.

While we commend the one member panel of Robert A. Badgley  for looking up the trademark on his own to verify it, when a Complainant lies about the trademark, there is no better indication of an attempt to grab a domain he has absolutely no rights to.  The panel should have pinned the RDNH on his record, just like domain holders that have lost several UDRP get a taint on their record in future UDRP’s.

I think this one should be added to the DomainHallOfShame.com

Here are the short relevant facts and findings:

The Complaint represented he owned the  YOURNEIGHBORHOOD” mark, with no reference to the LOVE WHERE YOU LIVE portion of the mark.

“Complainant holds rights in a mark containing the words YOURNEIGHBORHOOD LOVE WHERE YOU LIVE… Throughout the Complaint, Complainant refers solely to the YOURNEIGHBORHOOD component of this mark, and makes no mention of the other words. Nor did Complainant attach a copy of the USPTO registration as an annex to the Complaint, which would have been common practice. This omission is important, because it obscures the fact that the registration specifically disclaims any right in the text YOURNEIGHBORHOOD apart from the mark as shown. The Panel suspects legerdemain on the part of Complainant. Not only was this important information omitted from the Complaint, but Complainant actually asserted in the pleadings that “the Domain Name completely incorporates Complainants’ [sic] Mark.” The manifest falsity of that statement persuades the Panel that Complainant was trying to pull a fast one.

The Panel here, however, took the step of looking up the USPTO registration.

Even though the “confusing similarity” element of a claim under the Policy is generally regarded as a relatively low hurdle for a Complainant to clear, the Panel here rejects Complainant’s assertion that the Domain Name is confusingly similar to a mark in which Complainant has rights.

The absence of the text “love where you live” from the Domain Name is enough to thwart any claim to confusing similarity.

Accordingly, the Panel concludes that Complainant has failed to satisfy the requirement of Policy paragraph 4(a)(i), and the Complaint fails.”


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