A Fine Mess for California Company Caught in Reverse Hijacking Attempt

By Ron Jackson
Editor/Publisher

There is more good news for domain owners who have to fend off reverse hijacking attempts from companies claiming broader trademark rights than they are entitled to. The year got off to a good start when a WIPO panel ruled the Kiwi Shoe Polish company had attempted a reverse hijacking in their failed attempt to take Kiwi.com away from the current owner. 

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. The complainant had inquired about buying Mess.com  in 2000 but did not present an acceptable offer to the owner.  4 years later, the complainant has a registered  trademark for Mess.com -- a trademark for a domain name they did not even own" 

"Obviously 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?)," Goldberger said.

"We 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 level," Goldberger concluded. 

Here are some pertinent excerpts from the panel's finding of reverse domain name hijacking:

"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."

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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