The domain owner was hired by the Complainant to help it acquire the domain.
Toast, Inc., the company behind the ubiquitous restaurant ordering system, has won the domain name toast.io (pdf) through a cybersquatting dispute.
The company filed the dispute with World Intellectual Property Organization under the .IO Domain Name Dispute Resolution Policy.
This policy differs from UDRP in a key way: it requires registration or use in bad faith, not registration and use in bad faith. This means that a case can be won if the domain was registered before a trademark was acquired but subsequently used in bad faith.
In the instant case, the domain forwards to Toast’s rival Clover, indicating bad faith on the part of the domain owner.
But the case is a bit more interesting than that. It names Jeff Bennett of Bennett Global Group as the Respondent. Bennett was one of the founders of Name Media, the company that owned Afternic and BuyDomains before selling the former to GoDaddy and the latter to what is now Newfold Digital.
According to the WIPO decision, Toast hired the Respondent to help it acquire toast.io. In late 2018, Bennett Global’s broker sent a note to the Complainant reporting “good calls” with “the owner of Toast.io”:
We have engaged with owner of Toast.io over the weekend and again yesterday. He had no intentions of selling, though had some inquiries. He has reconsidered and came back last night indicating that he would sell for $125,000 (USD).
Toast, Inc. didn’t end up coming to an agreement to buy the domain.
So how did Toast’s broker end up owning the domain? The Complainant was not able to determine when Bennett acquired the domain name, but it noted two possibilities: Bennett owned the domain when he was acting on behalf of Toast to acquire it from an apparent third party, or he acquired it afterward. (Bennett didn’t respond to the dispute.)
Either way, redirecting it to a competitor’s site runs afoul of the .IO dispute policy. Panelist Scott Blackmer wrote:
The Respondent contracted with the Complainant to help the Complainant acquire domain names in May 2018 and specifically acted as the Complainant’s representative in negotiating for the purchase of the Domain Name later that year. If the Respondent already owned the Domain Name or acquired the Domain Name for itself during this engagement, without informing the Complainant and while acting as the Complainant’s broker and pretending that it was negotiating with a third party, then this deceptive practice must be considered bad faith under the Policy. On the other hand, if the Respondent did not own the Domain Name in 2018, it undeniably became aware of the Complainant and its marks at that time (the Respondent publishes the Complainant’s name and trademarked logo on the “Clients” page of the Respondent’s website), as well as the Complainant’s interest in the Domain Name. The Respondent subsequently redirected the Domain Name to competitors’ websites. This would be consistent with the Respondent acquiring the Domain Name after 2018 with the purpose of selling it to the Complainant or a competitor for an amount in excess of out-of-pocket costs (Policy paragraph 4(b)(i)). In either case, it is indisputable that the Respondent has at least since December 2021 redirected the Domain Name to competitors’ websites. Whether or not the Respondent is paid for this is immaterial. This conduct is consistent with the example of bad faith in the Policy, paragraph 4(b)(iv), because Internet users are misdirected to other websites for commercial gain, using a Domain Name that is identical to the Complainant’s trademark.
Blackmer ordered the domain transferred.
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