Should this have been reverse domain name hijacking?

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World Intellectual Property Organization panelist John Swinson has found against Cheyne Capital Holdings Limited in a dispute over the domain name

It’s one of those cases made difficult by GDRP. But once the domain owner’s identity was made available, the Complainant should have withdrawn the case.

Post-GDPR, UDRP providers get the domain owner’s information from the registrar and provide it to the Complainant. At this point, the Complainant amends its case to name the Respondent. And, if the ownership information kills their case, they can withdraw it at this point.

In this case, the registrar identified the owner as Sheri Kempe of “cheynegroup”. When the Complainant filed its amended case, it did not address the obvious issue of the owner apparently being a business with the name Cheyne Group.

Swinson did a little Googling and found the company.

The Respondent’s managing partner is James Cheyne, who sent some emails to WIPO, which Swinson summarizes as follows:

“We cannot imagine what anyone would possibly find offensive in our name.”

“My ancestors came from Europe, so with the name Cheyne and spelled the same as my family here, they must be related and I would like to talk to them. Family members here do not sue each other, especially for something like our name. I am 76 years old and have never heard from anyone in Europe. Let me know who the relative is and they are welcome to call me or email me. If they want my contact information, just have them email me.”

Twelve years ago, his lawyers conducted searches and established the company called The Cheyne Group, LLC.

Mr Cheyne also expressed concern that the case emails may be a scam.

With this information, the case is dead. The domain owner clearly has a legitimate interest in the domain. The Complainant had two opportunities to address this. First, it didn’t address the name of the Respondent in the amended complaint. Second, it didn’t respond to Swinson’s procedural order asking it to respond based on the new information about the Respondent. Swinson wrote:

The Complainant does not address in any detail the issue that the Respondent’s name, as listed in the Registrar’s records, is “cheynegroup”. The Complainant did not respond to the Panel’s Procedural Order that requested the Complainant to submit comments on the factual issues summarized in section 4 above including that there is a company in Texas called The Cheyne Group, LLC (that appears to be the correct legal name for the Respondent or associated with the Respondent).

The emails received by the Center state that Mr. Cheyne established The Cheyne Group, LLC.

There is no suggestion that The Cheyne Group, LLC is not a legitimate company.

From emails received by the Center, Mr. Cheyne is a 76 year old real estate broker in the Dallas area, and there is no evidence that he has knowledge of or operates in the field of funds management or European real estate in which the Complainant operates. The Complainant did not address this in the Complaint or in response to the Procedural Order.

The Complainant states: “… given that the Respondent has registered a Domain Name that includes the Complainant’s [CHEYNE trademark] identically, in no circumstances would any use of the Domain Name by the Respondent constitute legitimate or fair use of the Domain Name unless it was authorised by the Complainant. Any use of the Domain Name would take unfair advantage of the Complainant’s rights in the [CHEYNE trademark] and misleadingly divert users to the Respondent’s website instead of the Complainant’s website by use of the Complainant’s [CHEYNE trademark].” The Panel considers this to be an overstatement of the Complainant’s rights. Registration and use of a domain name corresponding to a surname does not necessarily take unfair advantage of a complainant’s trademark rights.

I can understand why the Complainant filed the case because at one point there were a couple of PPC links on the registrar holding page at the domain that referenced financial services, which is the Complainant’s business. But it should have withdrawn the case once it learned the Respondent’s details. And I wonder if Swinson should have at least considered reverse domain name hijacking given the Complainant’s lack of response to the procedural order.

Post link: Should this have been reverse domain name hijacking?

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