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The Lowdown is
compiled by DN Journal Editor & Publisher Ron
Jackson.
French
Company Found Guilty of Reverse Domain Hijacking Attempt
Against American Serviceman
While
serving with the U.S. Army in
Japan back in 2001, Steve
Hill discovered hand made kokeshi
wooden dolls that have been made in that
country for centuries now. "kokeshi"
is a generic dictionary word in Japan,
not a brand name. Thinking he might one
day want to build a website about the
cute local dolls, Hill registered the
domain name kokeshi.com.
He
has has it ever since but has never had
time to do anything with it as the Army
has moved him from one place to another
throughout his military career. In late 2009,
publishing company Editions Milan
of Toulouse, France decided to
start publishing a series of children's
books called "Kokeshi" a term
they acquired a French trademark on a
couple of years earlier - a trademark that
was however, limited to books and compact
discs.
Not
surprisingly, the company decided they
would like to own the domain name
kokeshi.com and asked Hill to sell it to
them. His first offer was $16,700
- an amount the publisher deemed to be
"outrageous" (obviously they
have no knowledge of one-word generic
domain values).
A
Japanese kokeshi doll
Their
lowball counter offer was $1,500
a token sum that Hill naturally turned
down. After he rejected what Editions
Milan called their "reasonable"
offer, they apparently decided if he
wouldn't give them his property at the
price they wanted to pay, they
would try to take it from him through a WIPO
filing instead.
Hill
hiredTraverse
Legalto answer Editions
Milan's bogus claim to his property.
Traverse easily blew holes in the
Complainant's case, noting "The
Complainant has no rights in a
generic or descriptive domain name,
particularly when its trademark was
registered at least five years after the
registration of the disputed domain
name."
Traverse
also noted, "There are over 1,000,000
uses of the word “kokeshi” in various domain
names" and added "The Complainant’s
trademark is only for use in association
with published books
and
compact discs. It does not give the
Complainant exclusive right to the descriptive
name “Kokeshi”. The Complainant cannot
monopolize the use of generic terms
andcommon words."
Apparently
this came as news to Editions Milan. They got
another news flash when
Traverse
asked the sole panelist, Sir Ian Barker,
to declare Editions Milan guilty of a reverse
hijacking attempt. Sir Barker
did the right thing and
made that declaration part of his decision
finding in favor of the Respondent, Mr.
Hill. You can read
the entire decision here (Word
document).
Unfortunately,
attempting to use the arbitration system to
hijack domain assets is becoming increasingly
commonplace and efforts are also being made
within ICANN to stack the deck
even more in favor of companies who employ this
despicable tactic. In the current environment,
it is good to know that there are still fair-minded
arbitration panelists out there who will turn
the tables on companies that try to use the
system to shake down domain owners.
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