discuss Rare 3L WIPO Case - VGW.com

[Robbie]

I was scrolling through some of the live WIPO cases and I came across this recent filing from 2023 - WIPO Case D2023-0345, we don't see many 3L Dot com WIPO cases - Let's hope for an RDNH finding on this case as the complainant is using.Co and clearly wants to own the .Com, however, business was formed in 2010 nearly 18 years after VGW.com was first registered.

https://robbiesblog.com/rare-3l-wipo-case-vgw-com/12312

 

[Armageddon]

They have business in USA ?
Notice own also .us version
If they not maybe a Nexus complain is welcome - LOL

 

[lambo.com]

$150,000,000

 

[jberryhill]

Probable respondent win. He had it before the Complainant existed.

 

[Robbie]

I agree John, but always worry with a single person panel.

 

[Keith]

Probable respondent win. He had it before the Complainant existed.

Interesting comment. Does that mean that generic domains bought after a TM is granted are at risk?

 

[draco]

Interesting comment. Does that mean that generic domains bought after a TM is granted are at risk?

There was the recent case of PRU . com. They acquired the domain after a TM and had ads for Prudential on the parking page. They lost the domain to Prudential. My guess is they would have kept the domain, if it wasn't for the ads.

 

[jberryhill]

Does that mean that generic domains bought after a TM is granted are at risk?

The simplest fact pattern for a respondent is when they can prove they had the domain name before the trademark existed.

I don't know what you mean by "after a TM is granted" since in the US, you don't obtain trademark rights by some sort of "grant". I realize that 99% of the people on this forum mistakenly believe that trademarks are obtained through the registration process. I've explained why this is incorrect about a dozen times here, and I'm not doing it again tonight.

So, saying this case should be an easy win is not a commentary on some other fact pattern.

They acquired the domain after a TM and had ads for Prudential on the parking page.

Yes, that's pretty straightforward. Even absent the ads, PRU is a fairly well-known mark in the US. Type "PRU" into Google and tell me what the first 50 search results suggest to you.

 

[cyberlawyer]

VGW Holdings Limited, an Australian company, has operated its site at vgw.co since 2010. It also has several trademark registrations for VGW. But Hyundoo Shin registered vgw.com in 2002, so this case was dead on arrival. (Even if he registered the domain later, proving cybersquatting with a three-letter domain isn't easy.)

Panelist Kathryn Lee found it in the domain owner’s favor and determined this was a case of reverse domain name hijacking. She wrote:

Here, the disputed domain name was registered well before the Complainant acquired trademark rights or even came into existence, so it would have been impossible for the Respondent to have registered the disputed domain name to target the Complainant and its mark. The Complainant should surely have known that the Complaint could not succeed based on these facts, and proceeding with this Complaint can only be viewed as an attempt to deprive a registered domain-name holder of a domain name.

Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.

VGW’s in-house counsel represented it in the filing. Ankur Raheja of CyLaw Solutions represented the domain owner.

source: https://domainnamewire.com/2023/04/25/owner-of-vgw-co-tries-to-reverse-hijacking-matching-com/