Colombian Real Estate Company Attempts to Reverse Domain Name Hijacking – Domain Name Wire
Might as well make a friendly opening.
You start a business. You do a trademark search and then form a corporation. The corresponding .com domain name is already registered and you cannot afford the asking price. You are therefore embarking on a field of second choice.
Later the same year, a Colombian company creates a company of the same name.
You’re not happy with the original domain you got, so you recontact the owner of the .com domain you want. This time you have the money to buy the domain.
You start using the new domain domain. Later, you notice weird traffic spikes from Colombia every now and then. You investigate and find the other company whose name uses the matching .co domain.
In an effort to help the Colombian company, you contact them and ask if they want you to forward any traffic from Colombia to their domain name. The Colombian company asks instead if you would be willing to sell the domain.
You have already launched on the domain and have a business running. You say you don’t want to sell the domain and any asking price would include the cost of rebranding, which means it would be expensive. When you’re in a hurry, you say your board would consider selling for an eight-figure sum.
The Colombian company then files a UDRP against your domain using selective facts, such as the price at which you said you would sell the domain when they twisted your arm for a certain price.
This is essentially what happened in a World Intellectual Property Organization dispute for habi.com (pdf).
The Colombian company is Inversiones MCN SAS, which operates a real estate service at habi.co.
Panelist John Swinson unsurprisingly uncovered reverse domain name hijacking:
The Committee concludes that this is a case of NHDR.
The Complainant attempted to purchase the disputed domain name from the Respondent without success. At that time, Complainant made no allegation that Respondent was acting in bad faith or had no right to own the disputed domain name.
There is no compelling evidence in the record that the Respondent at any time targeted the Complainant’s rights to the Complainant’s trade-marks.
Plaintiff, when filing the Complaint, was aware that Respondent had filed a trademark application in the United States for HABI before Plaintiff existed. Unless the plaintiff presented evidence or representations that this trademark application was a sham, which he did not, the plaintiff should have been aware of this fact alone that his chances of success in this dispute were weak. But the Complainant continued his Complaint.
Holland & Knight LLC represented the Complainant and Stoel Rives, LLP represented the domain name owner Habi Partners.