So much for making a friendly overture.
You start a business. You do a trademark search and then form a corporation. The matching .com domain name is already registered and you can’t afford the asking price. So you launch on a second-choice domain.
Later the same year, a company in Colombia creates a business with the same name.
You aren’t happy with the original domain you got, so you reach out to the owner of the .com domain you want again. This time, you have the money to buy the domain.
You start using the new domain domain. Later, you notice weird traffic spikes from Colombia from time time time. You investigate and find the other company with the name which happens to use the matching .co domain.
In an effort to help the Colombian company, you reach out and ask if they’re interested in having you forward any traffic originating in Colombia to its domain name. The Colombian company asks instead if you’d be willing to sell the domain.
You’ve already launched on the domain and have a business running. You say you don’t want to sell the domain and any asking price would include the cost of rebranding, which means it would be expensive. When pressed, you say your board would consider selling for an eight-figure sum.
The Colombian company then files a UDRP against your domain using selective facts, such as the price you said you’d sell the domain for when they twisted your arm for a price.
That’s essentially what happened in a World Intellectual Property Organization dispute for habi.com (pdf).
The Colombian company is Inversiones MCN S.A.S., which operates a real estate service at habi.co.
Panelist John Swinson unsurprisingly found reverse domain name hijacking:
The Panel finds that this is a case of RDNH.
The Complainant tried to buy the disputed domain name from the Respondent and was unsuccessful. At that time, the Complainant made no allegations that the Respondent was acting in bad faith or was not entitled to own the disputed domain name.
There is no persuasive evidence in the record that the Respondent at any time targeted the Complainant’s rights in the Complainant’s trademarks.
The Complainant, when filing the Complaint, was aware that the Respondent had filed a United States trademark application for HABI before the Complainant existed. Unless the Complainant presented evidence or submissions that this trademark application was a sham, which the Complainant did not, the Complainant should have been aware from this fact alone that its chances of success in this dispute were grim. But the Complainant proceeded with its Complaint.
Holland & Knight LLC represented the Complainant and Stoel Rives, LLP represented the domain name owner Habi Partners.
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Author: Andrew Allemann