WIPSystems.com UDRP case ruling: reverse domain name hijacking allegations affirmed

International Arbitration Forum, August 12, 2024 - In a recent dispute over the WIPSystems.com domain name, a panel ruled that the case was a case of Reverse Domain Name Hijacking (RDNH) and rejected the Complainant Work In Progress Creative Solutions Ltd's (the "Complainant") request to transfer the domain name. Progress Creative Solutions Ltd (the "Complainant").

Background

The domain name WIPSystems.com was registered in 2000 and is held by TOM MOBERG / WIP Systems of Washington State, USA (the "Respondent"). Work In Progress Creative Solutions Ltd of the United Kingdom, a software-as-a-service (SaaS) company, made several attempts to purchase the domain name for $3,000 between 2003 and 2005, but was refused. The Complainant states that in subsequent negotiations, an offer of $10,000 was made to purchase the domain name, which was also rejected. Eventually, the Complainant filed a UDRP (Uniform Domain Name Dispute Resolution Policy) complaint in 2024, requesting that the domain name be transferred to his company.

Main Points of Dispute

The Complainant asserts that it owns the rights to the service mark WIP SYSTEMS and alleges that the registrant of the domain name has registered and holds the domain name in bad faith and has hindered the development of its business. However, the Complainant has failed to provide sufficient evidence that its trademark rights were established or that it had obtained a national or international trademark registration at the time of registration of the Domain Name.

Key Points of Decision

1. Allegation of Bad Faith Registration: The Panel examined the timing of the domain name registration in relation to the Complainant's trademark rights. The record shows that the Respondent registered WIPSystems.com in 2000, while the Complainant asserts that its trademark rights are more than twenty years old. Since the Complainant has failed to provide sufficient evidence that its trademark rights existed at the time of the domain name registration, the Panel finds that the Complainant has failed to prove that the Respondent registered the domain name in bad faith.

2. Reverse Domain Name Hijacking (RDNH): The Panel finds that the Complainant has engaged in reverse domain name hijacking (RDNH), i.e., the use of the UDRP program in bad faith in an attempt to acquire a domain name that could not otherwise have been obtained through commercial negotiations. The following points support the RDNH finding:

-The Complainant, after unsuccessful attempts to acquire the domain name, chose to obtain the domain name through the UDRP program; and

-The Complainant knew that the Respondent had registered the domain name prior to the establishment of its trademark rights; and

-Complainant has not provided evidence that Respondent registered the domain name in bad faith.

Final Decision

The Panel decided to deny the transfer of the WIPSystems.com domain name to the Complainant and confirmed the reverse domain name hijacking. This decision demonstrates that in domain name disputes, the Complainant needs to provide sufficient evidence of bad faith registration behavior or risk facing charges of reverse domain name hijacking.