Another UDRP that should have never been filed

[Arpit131]

iCloak.com was registered many years before the complainant had rights to iCloak.

Simply put, the complainant tried to get a domain name that was registered well before it was in existence.

The complainant operates an internet privacy service called iCloak, promoted at the website iCloak.me. It registered a trademark for iCloak in 2014.

iCloak.com was registered in 1999. It’s not clear if it has been owned by the same company since then, but respondent Terra Serve definitely owned it for many years before the complainant started using the brand.

The complainant tried to buy the domain name for $750, never heard back, and then filed the UDRP.


Source

 

[SheikhOvais]

Newbie question
So even if the trademark was registered years after of the domain registration, don't they (icloak.me) still have a UDRP case? As icloak is still a registered TM?

 

[freety85]

In that case the respondent has to pay money to defend their name? Or just if they loose?

 

[MR PACKER]

Newbie question
So even if the trademark was registered years after of the domain registration, don't they (icloak.me) still have a UDRP case? As icloak is still a registered TM?

They can try, but it's very unlikely they will win given he registered the domain years before that business existed. They would only have any hope if he was promoting a similar service to theirs on his website......other than that, no chance.

In that case the respondent has to pay money to defend their name? Or just if they loose?

Yes if you want to defend you have to pay for it. See the recent WorkBetter.com case that was thrown out by the judge. The guy registered the name years ago and then when he wouldn't sell the domain to a guy who wanted it he trademarked the name and tried to reverse hijack it.

It didn't work...........I spoke to Jason (The guy who owned WorkBetter.com) 2 months ago about it as I was in the same position with a company in the US that wanted my domain. They trademarked the NAME and where attempting to reverse hijack it too. Well I called their bluff and I now have trademarked the DOMAIN and they have gone away.

It's pretty common for companies these days to attempt it, but it should be stamped out straight away.