Scuba fight results in reverse domain name hijacking

Panelist notes that scuba is a generic term.

A World Intellectual Property Organization panelist has found (pdf) eScuba Pty Limited to have engaged in reverse domain name hijacking.

The company, which operates a site at escuba.com.au, filed a dispute over scuba.net.au against Underwater Australasia Pty Ltd.

At one point, the Respondent was a distributor for the Complainant, but that relationship soured.

The domain owner points the domain to its website at underwater.com.au. It registered the domain before the Complainant existed.

Under the rules for the  .au Dispute Resolution Policy, the Complainant needed to show that the domain was registered or used in bad faith. Panelist John Swinson noted that the domain is generic and wasn’t used in bad faith.

He went a step further to find reverse domain name hijacking. He wrote, in part:

…The Complainant knew that “scuba” was a dictionary term used by many dive businesses. The Complainant knew from the beginning that the disputed domain name was generic and that the disputed domain name described the activities for which the Respondent used it. The Complainant knew that the Respondent registered the disputed domain name many years before the Complainant existed. The Complainant knew that the Respondent operated a legitimate scuba dive business, established before the Complainant existed. Moreover, the Complainant (who was advised by a specialist trademark firm) would know that its ESCUBA trademark was limited and was unlikely to cover use by others of the word SCUBA, and that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the facts, constitute bad faith.

The Respondent has used the disputed domain name for the whole period that the Complainant has existed, being 12 years, and during that time, there is no evidence that the Complainant has protested the Respondent’s ownership or use of the disputed domain name until the filing of the present Complaint. In recent times, the Complainant has had other issues with the Respondent, and the Complaint appears to have been brought for collateral purposes…

There might be another motive behind the complaint. The Complainant owns scuba.com.au and both parties have applied to get rights to the second level scuba.au domain name. Under auDA’s rules, scuba.au will remain in limbo unless one of the parties agrees to relinquish the domain to the other.

Gestalt Law Pty Ltd represented the Complainant. No representative was listed for the Respondent.

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