Now comes word that
Mess Enterprises of San Francisco, California
has also been tarred with the reverse hijacking brush after trying
to take Mess.com away from Scott Enterprises Ltd. In a
WIPO decision handed down Jan. 25, 2005 the panel declared "this is
one of the most egregious examples of reverse domain name hijacking
that any of the Panelists has thus far ever seen."
Scott Enterprises was successfully defended by
noted attorney Ari Goldberger of ESQWire.com
(Mr. Goldberger is also DNJournal's Legal Affairs
Consultant). Goldberger told us "this
was a case where the Respondent had operated a site under Mess.net.
complainant had inquired about buying Mess.com in 2000 but did
not present an acceptable offer to the owner. 4 years later,
complainant has a registered trademark
for Mess.com -- a trademark for a domain name they did not
they tried to steal the domain. We
found out that they actually filed their trademark application
on the very same day they had sent the email inquiring about
buying the domain. In the case, the Complainant alleged, without any
evidence, they had been using Mess.com since 1996, an obvious
fabrication (who would use a mark for a domain they don't own,
particularly when their web site was at Mess.net?),"
argued this was a clear case of reverse domain name hijacking by a
party who attempted to use the U.S Patent and Trademark Office
to essentially steal a domain name. This is an important case as
there likely are others who have applied for trademarks with the
intent to try and hijack domains. With this decision, domain owners
can rest somewhat eaiser – at least at the UDRP
Here are some
pertinent excerpts from the panel's finding of reverse domain name
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).
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
Full text of the WIPO Arbitration Panel's decision in
Case No. D2004-0964
can be found online
through this link.
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