Case Number: D2022-2900
Complainant: ProjectPay Pty Ltd
Represented by: Dentons Canada LLP
The Australian fintech company, ProjectPay Pty Ltd, has been slapped with a ruling of Reverse Domain Name Hijacking by the World Intellectual Property Organization, after trying to use the UDRP process to gain the transfer of the domain projectpay.com. ProjectPay.com is owned by an individual from Canada, Rohit Sur, and it was originally registered in 2001. The Australian company attempted to assert that it had earned rights to the domain because it had acquired trademark registrations in Australia, the United Kingdom and Canada, all since 2017, however. It also attempted to claim rights based on a supplemental trademark registration in the United States, which does not impart any protective rights.
The WIPO panel agreed with the respondent’s attorney, John Berryhill, who argued, “The Complainant’s professional representative must have known that one of the elements of the Policy was not going to be met and showed an alarming unfamiliarity with the UDRP.”
The WIPO panel began its own reasoning for a finding of RDNH with a near-identical statement, writing, “The Panel finds that the Complainant in fact knew or at least should have known at the time that it filed the Complaint that it could not prove one of the essential elements required by the UDRP, namely, it is very clear that the Respondent registered the Domain Name many years before the Complainant came into existence, filed and registered the Trademark.”
The WIPO ruling was handed up October 17, 2022.
Source: https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-2900.pdf