Company frustrated by .org/.com confusion filed a UDRP that was dead on arrival.
There might be a new poster child for egregious UDRP filings.
DrivenData, Inc., which uses the domain name drivendata.ORG, filed a cybersquatting dispute against the domain name drivendata.COM.
The company has been frustrated by confusion between the .org and .com domains since it launched on the .org over 10 years ago.
When it first launched, it contacted the .com registrant to inquire about the domain. Alon Orlitsky, who registered the domain in 2000, declined.
Since then, DrivenData has contacted him at least seven times about acquiring the domain name. He ignored those overtures.
In September last year, DrivenData’s counsel sent a letter to Orlitsky notifying him that it now had a federal trademark for DrivenData and that his “continual re-registration of the Domain Name is a false and misleading use of the Mark”. Orlitsky responded, but the lawyer didn’t receive it because it ended up in his spam folder.
DrivenData proceeded with a UDRP. After filing the UDRP, DrivenData’s representative spoke with Orlitsky by phone.
According to the panel’s decision, in that phone call:
Complainant’s representative stated that Complainant filed the Complaint as a “last resort” because Respondent had not responded to Complainant’s many messages over the years. Complainant explained that it was having “more and more trouble with confusion…” and “our coun[sel] advised us that the only way to really get in touch with somebody is to force the issue, which now has happened. So, I guess he was right.”
In other words, DrivenData still really wanted the domain name, wasn’t getting a response from the registrant, so it decided to file a UDRP.
To get past the obvious deficiency of the domain being registered before DrivenData existed, the company argued that each renewal of the domain name was a “re-registration.”
The three-member World Intellectual Property Organization panel found (pdf) this was a case of reverse domain name hijacking, and even suggested that the Complainant should consider paying the Respondent for the cost of the three-person panel.
Casner & Edwards, LLP represented DrivenData. The Respondent was self-represented. Lawrence K. Nodine, Michael A. Albert, and Tony Willoughby served as panelists.
Source: https://domainnamewire.com/
