A law firm filed a complaint for cybersquatting by abusing the Uniform Domain Name Dispute Resolution Policy.
A World Intellectual Property Organization panelist has ruled that law firm Bartko Zankel Bunzel & Miller attempted to reverse the hijacking of the bartko.com domain name.
The company filed a UDRP cybersquatting complaint against the domain name in an attempt to upgrade its domain from bzbm.com. He failed miserably.
The law firm probably didn’t know that the person who owned the estate had the surname Bartko. He could have found out if he had done a historical Whois lookup on DomainTools. Either way, once the Registrar verified the identity of the registrant, that should have been the company’s signal to drop the case.
Instead, he filed his amended complaint which added the name of the domain owner but retained language stating that the identity of the holder is “unknown” and that the complainant “is unable to determine the true purpose of the registrant’s use of the domain name in question”.
Even though Bartko Zankel Bunzel & Miller has an intellectual property practice, it failed to convince panelist Scott Blackmer that it has common law rights to single “Bartko.” The company has filed a trademark application for this, but it is still pending.
Yet in its filing it states: “The plaintiff was prohibited from using its trademark as a domain name.”
What is perhaps even more amazing is that the law firm has filed a trademark application with the United States Patent and Trademark Office for Bartko.com, an area he clearly does not own. It’s on an intent-to-use basis, so maybe he thought he’d earn that UDRP and then get a trademark for the domain.
The domain owner did not respond to the case. But Blackmer found this case worthy of reverse domain name hijacking:
This complaint is unusual in that it was filed both by and on behalf of a law firm that practices in the area of intellectual property law. The Panel draws attention to the fact that the Complaint was filed with this certification required under Rule 3(xiii), signed by counsel:
“The Complainant certifies that the information contained in this Complaint is, to the best of its knowledge, complete and accurate, that this Complaint is not presented for an improper purpose, such as harassment, and that the assertions contained in this Complaint are substantiated in under these Rules and under applicable law, as it now exists or as it may be extended by good faith and reasonable argument.
Section 15(e) of the UDRP Rules provides that if “after reviewing the submissions, the panel finds that the complaint was filed in bad faith, such as an attempted reverse domain name hijacking ( RDNH) or was filed primarily to harass the domain name holder, the Panel declares in its decision that the complaint was filed in bad faith and constitutes an abuse of administrative process”.
The Respondent has not submitted a response in this proceeding or requested a finding from NHDR, but the Panel finds compelling reasons to do so.
Reverse domain name hijacking is defined in the UDRP Rules as “the use of the UDRP in bad faith to attempt to deprive a Registered Name Holder of a domain name”. The simple failure of a complaint is not enough to conclude to a Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. An RDNH finding is warranted, for example, when a committee concludes that the complainant (especially one represented by counsel) should have acknowledged that they could not succeed on any of the three elements of the complaint under a fair interpretation of the available facts or complains on the basis of “minimum allegations without any supporting evidence” (id.).
Here the complaint is manifestly deficient. The brief presentation of “factual and legal grounds” is devoid of references to WIPO policy or overview and does not begin to address the difficulties encountered by a UDRP plaintiff with a common law trademark against an owner. domain name who has acquired a domain name by all appearances. identical to his last name almost a quarter of a century ago.
The complaint offers minimal evidentiary support for its unregistered mark. There is no evidence of sale or advertising under the brand. The public acknowledgment of the law firm evident on Complainant’s website refers to Complainant by several other names and abbreviations, and not by the claimed mark. Thus, the complaint could not establish standing under the first element.
The likelihood of the plaintiff prevailing over the other two elements was equally unlikely. Once the Registrar identified the Underlying Registrant as Respondent Jan Bartko, a person whose last name matches the domain name, Complainant should have amended the Complaint to address the obvious implications of its arguments. concerning At first glance legitimate interests and bad faith. The complainant amended his complaint, but only to add Mr. Bartko’s name to the caption. The Amended Complaint continues to say, under the second element, that the identity of the Registrant is “unknown” and that the Complainant “is unable to determine the true purpose of the Registrant’s use of the domain name in question”. In any event, Plaintiff infers that Respondent must have intended to sell the Domain Name to Plaintiff – even though it has made no attempt to do so in 24 years. The Complainant provides no evidence concerning the notoriety of its activity in 1998 (or any subsequent acquisition of the disputed domain name, if any), which would be necessary to persuade a formation that the Respondent actually chose the Name domain name in the hope of exploiting the Complainant’s reputation rather than because the Domain Name matched his.
The Complainant presents incongruous arguments and flagrant inaccuracies. Perhaps the most glaring is this:
“The plaintiff was prohibited from using its trademark as a domain name. Instead, Complainant was forced to use the domain name, www.bzbm.com, which made it more difficult for customers, including potential customers, to access Complainant’s appropriate webpage. , and unlawfully prohibited the Complainant from using his preferred domain. Name.”
The plaintiff does not have a registered trademark. It only recently filed two trademark applications. Plaintiff repeatedly uses “BZBM” and other names other than BARTKO on its own website and in its press releases and the USPTO specimen. The WhoIs database and the WayBack Machine show that the Complainant has been using bzbm.com since 2004.
The Panel finds that Complainant filed the Complaint in bad faith, within the meaning of Rule 15(e), in an attempt to Reverse Domain Name Hijacking.