The dates did not match.
A World Intellectual Property Organization panelist discovered that Titmouse, Inc. attempted to hijack an upside-down domain name.
The animation studio, which uses the domain titmouse.net, filed a cybersquatting lawsuit against titmouse.com.
Based on the ruling, it appears Titmouse was frustrated with his inability to acquire the corresponding .com and filed the UDRP after years of trying to secure the domain.
The problem for Titmouse was that the domain name holder had acquired the domain in 1998, two years before the plaintiff was legally incorporated. (The plaintiff had a mark with a date of first claimed use of 1992, but did not explain how he claimed first use before the business existed.)
Titmouse said he had been using a monitoring service through GoDaddy since 2003 to try to “reclaim” the domain. He also attempted to buy the estate in 2008, but the parties failed to reach an agreement.
The domain owner says he had heard nothing from the plaintiff since the failed negotiation in 2008.
Panelist W. Scott Blackmer discovered reverse domain name hijacking, writing:
…The Complaint totally ignores the glaring difficulty that the Complainant must show bad faith in the registration of the Domain Name, which in this case preceded the existence of the Complainant himself as well as his trademarks. This issue is clearly addressed in WIPO Overview 3.0, section 3.8: “where a defendant registers a domain name before the plaintiff’s trademark rights have been acquired, panels will normally not find bad faith of the defendant”.
There are specific cases where a plaintiff can demonstrate that a defendant anticipated the registration of the mark; some of these might arise in circumstances where the mark had already acquired distinctiveness at common law while belonging to a self-interested predecessor. However, the complainant did not provide any evidence in this regard. Instead, Complainant made conclusive assertions “on information and belief” that Respondent registered the Domain Name in bad faith, to demand an exorbitant purchase price from the (subsequent) owner of the trademark. , prevent it from acquiring a corresponding domain name or hijack Internet users for commercial purposes. A UDRP Complaint is not a pleading “information and belief” opinion that serves as a prelude to discovery and trial. The parties have only one opportunity to present evidence and arguments, and in this case, the Complainant has singularly failed to do so.
Mésange was represented by Mandour & Associates. The owner of the domain represented himself.
[Note: WIPO released this decision last week, but I overlooked it until I received the Internet Commerce Association’s weekly UDRP roundup this week. If you’re interested in cybersquatting cases, subscribe to this newsletter.]