Case Number: D2020-1786
Complainant: Sahil Gupta
UPDATE: Sahil Gupta found guilty of second RDNH only three months later, in second attempt to hijack Spase.com. Read the update here.
In a case that has become almost become a social media meme for Reverse Domain Name Hijacking, the CEO of spase.io has been found guilty of abusing the UDRP process by a three-member panel of the World Intellectual Property Organization. The WIPO panel handed up its RDNH decision against Sahil Gupta on September 15, 2020, after ruling he had filed his UDRP in a bad faith attempt to obtain the domain spase.com, owned by Mrs Jello, LLC. The complaint had been filed on July 3, 2020, after an apparently-failed attempt to purchase the domain from Mrs Jello.
The complainant, Mr. Gupta, argued that he had established common-law trademark rights to the term “spase”, as he had promoted his 3-D modeling business, Spase, Inc., on numerous websites, in interviews and in podcasts. For its part, Mrs Jello, LLC, represented by Greenberg & Lieberman, argued Mr. Gupta’s complaint was, itself, a bad-faith effort to take a domain for which Mr. Gupta was unwilling to pay. In its response, Mrs Jello, LLC noted it had never heard of Mr. Gupta or his company until they received an inquiry about a potential sale.
While the panel agreed there was sufficient proof of common-law trademark rights, it disagreed with nearly every other argument presented in Mr. Gupta’s complaint. Most notable was the panel’s departure from Mr. Gupta’s interpretation of what constitutes bad-faith domain registration on the part of a respondent, in this case, Mrs Jello, LLC. Mr. Gupta argued his common-law trademark rights automatically gave him sole, legitimate interest in the domain, spase.com, stating Mrs Jello LLC “should be recognized as a ‘domain squatter’” because of previous UDRP rulings against the company.
The panelists wrote that Mr. Gupta had hardly been able to demonstrate bad faith domain registration purely on the basis of his own common-law trademark rights. The panel even noted Mr. Gupta’s attempt to impeach the business model of Mrs Jello, LLC, actually helped support the legitimacy of that very model, which included both domain sales as well as pay-per-click revenue generation.
The panel, in its decision, stated the PPC model of Mrs Jello, LLC, with regard to spase.com, had been perfectly legitimate, particularly in view of the fact there had been no change in the use of the domain since its acquisition by Mrs Jello, LLC, in 2005, long before the start of Mr. Gupta’s Spase, Inc.
“There has been no demonstrable change of the Respondent’s use of the disputed domain name over a number of years, and there is no evidence of the Respondent’s targeting of the Complainant or the Complainant’s unregistered trademark rights in SPASE,” the panelists wrote.
Without dissent, the panel then accused Mr. Gupta of bringing a bad-faith case after failing to acquire the domain, legitimately, on the domain sales aftermarket.
“[T]he Respondent registered the disputed domain name <spase.com> in February 2005, and had used the disputed domain name to generate PPC revenues for some (14) years prior the Complainant’s adoption of the SPASE name,” the panel further wrote. “The Complainant, after unsuccessfully attempting purchase the disputed domain name from the Respondent, then filed a groundless Complaint.”
This particular RDNH sparked calls from the domain industry, itself, for a special mention of Mr. Gupta. As a result, he became only the second RDNH Poster Boy to be created by the industry, in over 25 years.
Read the full story here: http://www.hallofshame.com/poster-boys/