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Spain-based Industrial Firm Found Guilty Of RDNH

Case Number: D2018-1772

Complainant: Ausacorp, S.L.

Represented by: Herrero & Associados

A light-industrial machine company, based in Barcelona, Spain, has been found guilty of attempted reverse domain name hijacking for using the UDRP process to acquire the domain excelway.com. The company, Ausacorp, S.L., asserted through its attorneys, Herrero and Associados, of Madrid, Spain, that the domain was identical to a 2012 trademark the company held. The complaint also stated the domain was confusingly similar to a new product line Ausacorp was offering, called “Excelway”. However, a panel at the World Intellectual Property Organization observed the complainant offered no information about when the new product line was started.

Furthermore, the domain was registered in June of 2003, which the panel noted was nearly nine years before the complainant’s “excelway” trademark was filed, in May of 2012. The owner of the domain, Andrew David Dawson, of Blackburn, England, UK, responded to the complaint by informing the panel the company had attempted to purchase the domain, directly, on at least one occasion, and possibly a second time, through a broker. In each case, Mr. Dawson responded, both the company and the broker offered the same amount for the domain name, £6,000 (approximately $7,800).

In issuing its decision, the panel wrote that there was little likelihood any WIPO panel could find the domain was registered in bad faith, since the trademark rights of the complainant simply did not exist when Mr. Dawson registered the domain in 2003. ”In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the [trade mark] at the time of registration,” the panel decision reads. “In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith.”

The panel added that Ausacorp must have known there was no bad faith or that it was highly unlikely. “In these circumstances, the basis on which to find that the Respondent registered the Disputed Domain Name in bad faith are highly limited. The Complainant must have known this.

“The Panel considers the Complainant launched the proceedings out of desperation as its prior attempt to purchase the Disputed Domain Name from the Respondent were unsuccessful but without a reasonable chance of success and as such in the circumstances constitutes an abuse of the administrative proceeding,” the panel concluded.

The WIPO ruling was handed up September 30, 2018.

Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-1772

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