Company’s attempt to milk Tucows fails.
A World Intellectual Property Organization panel has found (pdf) that Damstra Technology Pty Ltd filed a cybersquatting dispute in bad faith.
The Australian company filed a dispute against the domain name Damstra.com. Tucows owns the domain name as part of the surname portfolio that it acquired in the Mailbank.com acquisition in 2006. Tucows uses the domain name for its RealNames service that offers email addresses ending in popular surnames.
Damstra claimed that Tucows was passively holding the domain and hadn’t used it, and only registered it to resell it, even though it was obvious that it was part of Tucows’ RealNames service. It also referred to a trademark application it filed with the U.S. Patent and Trademark Office, while not disclosing that the application had been denied (and was abandoned during the proceedings.)
The panel found that Tucows has rights or legitimate interests in the domain name and did not register it in bad faith. Furthermore, if found Damstra attempted reverse domain name hijacking with the case.
In finding reverse domain name hijacking, the panel wrote:
In the present matter, the Panel finds that the Complainant should have known at the time that it filed the Complaint that it could not prove one of the essential elements required, as it is clear that the Respondent registered the Domain Name before the Complainant filed and registered the Trademark.
Furthermore, the Panel also finds that the Complainant (or rather, its professional representative) has either been extremely careless, or has tried to mislead the Panel by 1) suggesting that the Domain Name was not being used at all, 2) not disclosing accurately the status of the United States trademark application and 3) not disclosing that the Complainant sought to purchase the Domain Name rather than the Respondent offering the Domain Name for out-of-pocket expenses.
Rankin Business Lawyers represented the reverse domain name hijacker, and John Berryhill represented Tucows.
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