RDNH Finding in TOGG.com UDRP

A Turkish company officially known as Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi filed a UDRP against the 4 letter TOGG.com domain name at the World Intellectual Property Organization (WIPO). The panelist, Matthew Kennedy, ruled in favor of the domain registrant and found that the complaint was brought in bad faith (Reverse Domain Name Hijacking – RDNH). The domain registrant was represented by attorney John Berryhill.

According to the decision (published today), the complainant tried to withdraw the UDRP in order to reach a settlement with the domain registrant. The domain registrant was willing to allow the withdrawal if the complainant agreed to not re-file a UDRP or other legal dispute elsewhere. By not agreeing to this stipulation, the WIPO UDRP proceeding continued.

It looks like this was a fairly straightforward case for the domain registrant and its counsel to defend. The domain name was acquired well before the complainant existed, and without having knowledge about the complainant in advance, it would be impossible to prove the domain name was registered in bad faith. Here’s an excerpt from the decision covering that aspect:

“According to the evidence in the case file, the latest time at which the disputed domain name would have been acquired by the Respondent was in 2014, four years before the Complainant was formed and five years before it obtained its earliest trademark registrations. It is unnecessary to consider the Respondent’s claims that the disputed domain name was originally registered by a previous owner of part of its business because the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed domain name. Nothing in the record of this dispute indicates that the disputed domain name was acquired in anticipation of the Complainant’s rights in its marks either.”

With such a weak case, the panelist ruled this was an abusive filing. Here’s what the panelist wrote in the discussion about the complaint being brought in bad faith:

“The Respondent submits that the Complainant had to know, when it selected TOGG as a mark in 2018, that the disputed domain name was already registered. and that this case was filed as a bad faith attempt to steal a legitimately registered and used senior name. The disputed domain name is a short, pronounceable four-letter domain name potentially of considerable commercial value. The Respondent is not even trying to sell the disputed domain name but is using it in the course of business conducted for 18 years. The Respondent reasonably believes the Complainant is behind one or more inquiries which have been made to purchase the disputed domain name.

The Panel notes that the Complainant has legal representation in this proceeding. The Complaint specified the creation date of the disputed domain name in 2003, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. Although the Complaint also specified that the WhoIs details for the disputed domain name were last updated in December 2019, the Complainant does not articulate any argument that this would have been the acquisition date of the disputed domain name (which appears by all accounts not to be the case) such that the Respondent would have acquired the disputed domain name after the Complainant acquired its trademark rights. The Complaint merely argues that the Respondent “keeps” the disputed domain name in bad faith. The Panel does note that the Complaint was initially filed against a privacy service, and that the disputed domain name redirects to a business that on the surface bears no relation to the “togg” initials but that in the interval between filing the Complaint and purporting to withdraw it, the Complainant obtained the privacy-protected details of the Respondent, as confirmed by the Registrar, and the Center notified the amended Complaint to the Respondent. While the relation between “togg” and the redirection of the disputed domain name to the “tcbinc” site would still not necessarily have been readily apparent, the Complainant did not articulate any specific argument that the acquisition of the disputed domain name by the Respondent post-dated the Complainant’s business launch and publicity.

In the above circumstances, the Panel finds that while the relation between “togg” and “tcbinc” may not have been obvious to the Complainant, the Complainant at best launched this proceeding without addressing the critical issue in the case (namely, potential later acquisition by the Respondent) and potentially knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. See WIPO Overview 3.0, section 4.16.”

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Original article: RDNH Finding in TOGG.com UDRP

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