finally some sanity in a WIPO decision mess.com

[sitehq]

This case exhibits one of the most egregious examples of reverse domain name hijacking that any of the Panelists has thus far ever seen.

Here, the Complainant filed its 78/023,371 trademark application, on an intent-to-use basis, on August 20, 2000. This date was some 2 1/2 years after the Respondent registered the domain name on March 14, 1998, and with clear knowledge of the Respondent’s prior registration (see e-mail from Complainant to Respondent dated August 20, 2000 - that date certainly being no mere coincidence with the exact same filing date of the Complainant’s trademark application). While the Complainant claimed a first use date of December 10, 1996, for its class 41 services, the record, including the prosecution file history for the Complainant’s “MESS.COM” Mark, is utterly devoid of any proof of use on that date. In fact, the only evidence of use which the Complainant has submitted is a December 10, 2001 press release. The Complainant also alleges a December 10, 1999 first use date for its class 42 services. This date too is after the date on which the Respondent registered the disputed domain name.

Accordingly, this Panel finds that the Complainant had no trademark rights at the time the Respondent registered the domain name, and knew it and, in spite of that knowledge, then proceeded to intentionally secure a trademark registration with an express purpose of fraudulently invoking the Policy as a means to wrest the disputed domain name from the Respondent, by an order of transfer from an administrative panel, if the Respondent’s sales price was too high (which at $25,000 it evidently was). To the Panel, this conduct constitutes a clear abuse of the Policy.

Hence, the Panel finds that the Complainant committed reverse domain name hijacking.



my comments - would have been nice if they would have commented on the use of a domain name to redirect to overture as a legitimate use.

 

[jberryhill]

The Complainant has a guestbook at their website:

http://www.mess.net/

in case you wanted to share your feelings with them.

 

[Ovicide]

http://arbiter.wipo.int/domains/decisions/html/2004/d2004_0964.html

The Complainant is ... represented by Steve Clinton, United States of America.

If Steve Clinton is a lawyer, shouldn't he have known that this complaint had no merit?

Has he exceeded his scope of practice?

findlaw.com shows a Steve Clinton in San Jose, but not in San Francisco.

 

[jberryhill]

This is the lawyer for the Complainant:

http://www.svlg.com/attorneys_clinton.htm

If Steve Clinton is a lawyer, shouldn't he have known that this complaint had no merit?

His email address is on that web page. Perhaps interested members of the forum might direct your questions about the case to him, and then summarize his responses here.

 

[Dave Zan]

What a coincidence, John: in a way, this case answers what I just asked you
yesterday, although of course this is different.

Definitely one of the best UDRP decisions ever...

 

[dtobias]

would have been nice if they would have commented on the use of a domain name to redirect to overture as a legitimate use.

That wouldn't be particularly relevant to the case, given that it turned on the complete lack of valid basis for the complaint, rather than on any rights or legitimate interest the respondent may have had.

Personally, I think all those "redirect to Overture" (or any other pseudo-portal-type sites squatting on various domains) sites are like cockroaches, serving no useful purpose other than being an annoying nuisance, so I have no desire to see anybody (including UDRP panels) support or defend them, but that doesn't mean that anybody has a right to yank their domains with completely bogus trademark claims.

 

[Duke]

For those interested in more details on this decision, we have just published A Fine Mess for California Company Caught in Reverse Hijacking Attempt with comments directly from winning attorney Ari Goldberger.

http://www.dnjournal.com/columns/mess.htm

 

[Dave Zan]

The Complainant has a guestbook at their website:

http://www.mess.net/

in case you wanted to share your feelings with them.

Their guestbook has a script error, won't let me post.

 

[jberryhill]

Their guestbook has a script error, won't let me post.

That's odd. It was working fine this morning.

 

[actnow]

That's odd. It was working fine this morning.

Here is what they posted on the sign-in page of the guestbook

09-06-2004: We have turned off our guestbook since all we get here now
are porn advertisements. If you really want to post a comment, email
[email protected], and we will post up your comments. But not if you are
advertising or pushing porn, sheesh. -web


John, what kind of comments did you leave? :-D

 

[Ovicide]

Accordingly, this Panel finds that the Complainant had no trademark rights at the time the Respondent registered the domain name, and knew it and, in spite of that knowledge, then proceeded to intentionally secure a trademark registration with an express purpose of fraudulently invoking the Policy ...

-- and --

The "mess.com" record at uspto.gov says:

First Use Date: 1996-12-10
First Use in Commerce Date: 1999-12-10

Aren't people supposed to be truthful when they file UDRP complaints and when they apply for trademark registrations?

What can happen when they aren't truthful?

 

[dtobias]

Some cases where companies successfully reverse-hijacked domains using alleged trademark rights over domains they didn't actually own:

ec.com: http://www.arbforum.com/domains/decisions/95344.htm
paint.biz: http://www.arbforum.com/domains/decisions/112596.htm

 

[Theo]

Dan, so you're saying that Elequa's successful Oxide engine is a roach motel?

 

[dtobias]

That's odd. It was working fine this morning.

It shows no new postings since 2003.

Dan, so you're saying that Elequa's successful Oxide engine is a roach motel?

I don't know... does anybody check in but never check out?

Some of the exploitative sites out there are like the Hotel California: you can check out any time you like, but you can never leave, because it'll keep spawning more new popup windows on you. (Not for me though, since I use Mozilla and have it configured to refuse popups.)

 

[jberryhill]

What can happen when they aren't truthful?

18 USC 1001

(a) Except as otherwise provided in this section, whoever, in any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States, knowingly and willfully—

(1) falsifies, conceals, or covers up by any trick, scheme, or device a material fact;

(2) makes any materially false, fictitious, or fraudulent statement or representation; or

(3) makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry;

shall be fined under this title or imprisoned not more than 5 years, or both.

 

[Ovicide]

18 USC 1001
...shall be fined under this title or imprisoned not more than 5 years, or both.

Okay, that makes sense.

I wouldn't mind seeing someone get their kundalini caught in the ringer.

 

[Ovicide]

Moderator, please delete (accidental post).