ITWAY's attempt to recapture icoy.com failed, and it was convicted of reverse domain hijacking

Recently, the dispute arbitration case filed by Italian technology company ITWAY S.p.A. regarding the domain name ICOY.com was formally dismissed, and the arbitration institution even determined that its behavior constituted reverse domain hijacking. This means that ITWAY was found to have attempted to seize ownership of a legally registered domain name by improper means.

ITWAY is a listed company in the field of information technology. Since 2019, it has begun to develop a system called ICOY, which aims to reduce safety accidents in industrial sites, especially involving forklifts and heavy equipment, through the Internet of Things and AI technology. The company registered the domain names icoy.it and icoy.eu in June 2019 and officially launched the product in 2020.

However, the core icoy.com domain name was legally acquired by an American investor as early as 2000, a full twenty years ahead of ITWAY's product conception. The investor is an experienced domain name collector and holds multiple four-character domain names, icoy.com is just one of them.

ITWAY tried to purchase icoy.com through the Sedo platform, but failed to accept the other party's asking price of $22,500. After failing to reach a deal, ITWAY filed a UDRP complaint with the World Intellectual Property Organization (WIPO), attempting to reclaim the domain name on the grounds of "trademark infringement". However, the arbitration panel held that the domain name was not registered in bad faith, and the registration time was earlier than the appearance of the complainant's trademark and products, and it did not constitute infringement at all.

More importantly, the arbitrator pointed out that ITWAY tried to forcibly reclaim the domain name even though it knew that the domain name registration was earlier than its trademark rights. Its behavior was inconsistent with the principle of good faith and constituted an obvious "reverse domain name hijacking".

This case once again warns terminal companies: in the early stage of brand strategy formulation, domain name layout should be planned as a priority, and do not hope to seize the domain name that has been legally registered through arbitration afterwards. For domain name investors, the judgment also once again emphasizes that the legitimacy of reasonable domain name holding is protected by the UDRP mechanism.