The Complainant said the domain owner committed fraud in its response. It doesn’t look that way.
I write about a lot of reverse domain name hijacking cases. Most of them are fairly simple, such as filing a UDRP against a person who registered the domain before the Complainant existed.
But a case published by World Intellectual Property Organization today is more complicated and more serious.
Nextbite Brands, LLC, a company that provides software to “ghost kitchens”, filed a dispute against Nextbite LLC, a company in Kuwait, over the domain NextBite.com.
The original complaint was “relatively brief and does not do much more than set out the formal requirements under the Policy that the Complainant has to show,” panelist Nick Gardner wrote.
The Respondent told the panel that it was a legitimate entity in Kuwait, that it acquired the domain from B52 Media (a domain investment firm founded by the late Lonnie Borck) in 2017, and has multiple trademarks.
That’s when things got weird. Nextbite Brands, LLC alleged that the documentary evidence domain owner Nextbite LLC presented to the panel was forged.
For example, as printed in the decision:
The Reply goes on to state “Next Respondent alleges that it, ‘acquired the nextbite.com Domain Name back in July 2017, from B52 Media LLC (a US based company); which is even before the Complainant was established.’ The Whois record for the domain shows that Respondent obtained ownership on May 15, 2019. A copy of the historical whois metadata can be found in Annex H. This metadata was extracted from the publicly available website 42metadata which is simply a more detailed version of the Whois metadata in Annex B. Again, Respondent’s allegation is easily provably false and the form is fraudulent as well”.
I checked historical Whois records, and it appears that the domain changed ownership around the time the domain owner says it acquired the domain from B52. The domain owner provided additional proof of buying the domain in 2017. Garner wrote that the basis for the Complainant’s fraud claim was that it thought the “updated” date in Whois showed the acquisition date.
The Complainant also apparently thought that evidence from the Wayback machine dating from 2016 was in its favor because it showed that Nextbite.com forwarded to Nextbite.co back then. But the Respondent also owns Nextbite.co.
According to the published decision, Nextbite Brands, LLC also alleged that the trademark information the Respondent provided was erroneous. But Gardner pointed out that much of the trademark information in Kuwait is not published online, so the databases the Complainant relied on did not appear to be complete.
It’s serious to allege that someone lied and provided forged material. And from what panelist Gardner could determine, these allegations did not bear out. Gardner wrote:
The Panel regards the Complainant’s allegation as extremely serious. It has not actually said how it alleges the forgery was effected or who it says did it but it seems to the Panel that the only logical possibility is that the Complainant’s case is that the Respondent acting in collusion with its legal advisers perpetrated the alleged forgery. The Respondent’s legal advisers would appear to be a major international law firm. According to its website Al Tamimi & Company, describes itself as the “leading law firm in the Middle East and Africa region” with 16 offices in 9 countries across the Middle East and Africa and with a staff of some 450 legal professionals. An allegation of forgery (either directed at the Respondent or at this firm), in the Panel’s opinion, should not be made lightly and needs to be taken seriously.
The underlying issue that has led to the allegation is that the official records of the Kuwait Trade Mark office are not available on line. This can be confirmed by visiting the Kuwait Government Ministry of Commerce and Industry website where the procedure to enquire about a trademark is identified as “Visit the Ministry of Commerce, Sharq area, Al Shuhada st., KIPCO tower, Trademark Control Department, Patents Office and submit the documents [i.e. the details of the trademark in question]”.
Pausing at this point the Panel would say that in view of the seriousness of this allegation it would have expected the Complainant to instruct appropriately qualified local agents to make this enquiry in person about the trademarks in issue and provide appropriate evidence as to the result. It has not done so.
Nextbite Brands, LLC filed the dispute after its offer to acquire the domain for $100,000 was rebuffed. Even after filing the UDRP, it tried to negotiate to buy the domain.
In finding reverse domain name hijacking, Garner wrote:
The Panel considers the Complainant’s conduct warrants a finding of RDNH. It considers the Complaint as filed overstated the Complainant’s case and failed to consider properly the likely evidence as to when the Respondent acquired the Disputed Domain Name. It also made unsubstantiated allegations of “phishing” and fraud and claimed (incorrectly) that the Respondent’s use of the term “llc”. indicated it was a (non-existent) US corporation. Faced with a Response which clearly set out the Respondent’s case and which would, if correct, be likely to succeed, the Complainant then sought to deal with the problems with its case by making allegations of forgery and fraud. These were not properly made out and were not in the Panel’s view sustainable – see discussion above. They should never have been made. The Respondent must have been placed to considerable cost and effort in dealing with them.
It is also appropriate to note that the Respondent in its Further Reply places in evidence further correspondence from the Complainant to the Respondent received whilst the present proceeding was underway, seeking once again to initiate discussions in order to purchase the Disputed Domain Name. Taken as whole the Panel reaches the conclusion this Complaint was brought to harass the Respondent as part of a strategy to acquire the Disputed Domain Name, earlier attempts to purchase it having failed. Accordingly the Panel finds RDNH.
Novian & Novian LLP represented the Complainant.
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Author: Andrew Allemann