Glasgow-based Coolside Limited (distributors of the trtl travel pillow) are found to be Reverse Domain Name Hijackers. Their lawyers, Burness Paull, were found to have abused the adminstrative proceeding.
John Berryhill gets another RDNH win. Company that owns TRTL.co.uk tried to get TRTL.com through UDRP
The TRTL.com UDRP case is mentioned in the article by Gerald M. Levine Domain Names Identical to Trademarks But No Likelihood of Confusion (Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy). Gerald M. Levine has been awarded the ICA Lifetime Achievement Award acknowledging his unmatched expertise on domain name law and his commitment to delving into and discussing UDRP Policy jurisprudence.
Other UDRP cases are now citing the Coolside Limited v. Get On The Web Limited UDRP case regarding the TRTL.com domain name:
Coolside Ltd loses its UDRP case in an attempt to unfairly grab the 16 year old TRTL.com domain name.
Unanimously all of the three panelists agreed that the TRTL.com domain name had not been registered and used in bad faith.
The panelists stated "The Domain Name was registered on March 4, 2000, some 10 years before the Complainant came into existence, and 13 years before the Complainant acquired rights in respect of the mark TRTL and subsequently commenced trading under that name. In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the name TRTL at the time of registration. In this Panel's view, therefore, the Domain Name cannot conceivably have been registered in bad faith."
"The Complainant has not brought any coherent evidence even of any such bad faith use in this case.
It follows that the Panel does not find that the Domain Name has been registered and is being used in bad faith."
The WIPO Panelists stated: "Rules paragraph 1, definition of Reverse Domain Name Hijacking ("RDNH"). ....... Among the reasons cited by UDRP panels for a finding of RDNH or other abuse are the following, all of which are present in this case:"........
The WIPO ruling on the case (Coolside Limited v. Get on the Web Limited) can be found at WIPO Case No.: D2016-0335
The panelists' concluding paragraph sums up by saying:
"In light of the foregoing, this Panel concludes that “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP” – bad faith in registration and use.WIPO Overview 2.0, paragraph 4.17.
What is Reverse Domain Name Hijacking (RDNH)?
Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
Before contemplating filing a UDRP case, Complainants should read the CircleID.com article “The Hidden Perils of Filing a Baseless UDRP Complaint”.
The Internet Commerce Association (ICA) has published its proposal for
The ICA has issued a statement regarding the ADO.com UDRP case.
Why did Coolside Limited file this folly of a UDRP case which could never have succeeded?
Why indeed? Even the panelists said "..the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP..” and therefore could not succeed.
For a UDRP complaint to succeed, the UDRP rules require both that:
"the domain name has been registered AND the domain name is being used in bad faith".
The domain name TRTL.com was registered many years before Coolside even existed (10 years to be precise) and many years before Coolside (13 years to be precise) acquired registered trademark rights.
Coolside and their lawyers Burness Paull would have known this prior to launching this folly of a UDRP case.
Coolside based their UDRP case on 3 previous UDRP cases, one of which was the
Telstra Corporation Limited v. Nuclear Marshmallows Case No. D2000-0003 case.
There are so many UDRP cases which quote the Telstra case. For example in the Soda LLC v. SIMPLEDOLLAR.com case the panelist stated that "Had Complainant considered prudently the elements of bad faith under the third element of the Policy, and done its homework regarding the Telstra case on which Complainant relied, Complainant should have been able to determine easily that the circumstances in this case differ fundamentally from those in Telstra, and there could be no finding of bad faith."
Coolside also quoted the Polaroid Corporation v. Jay Strommen case WIPO Case No. D2005-1005 where the domain name was registered in 2004, many years after Polaroid’s trademarks going back to 1988. So the trademarks in the Polaroid case well predated the registration of the domain name, unlike the UDRP case regarding the TRTL.com domain name.
Coolside would have been well advised to have read these judgements before having quoted them in their case for TRTL.com.
and finally, regarding Coolside's unauthorised supplemental submission:
The panelists said that "The Panel does not consider that there is any ground on which to admit the supplemental filing and, accordingly, declines to do so, noting that nothing in that filing would alter its decision."
Specialist IP lawyers Megan Briggs and Colin Hulme of Burness Paull LLC submitting this unauthorised supplement that added "nothing" probably irritated the panelists further. Why did they bother?
Megan Briggs and Colin Hulme of Burness Paull LLC would have been wise to do a little more research before filing their case in April 2016. A case submitted in the same month April 2016 DEGANI DESIGNS, LLC v. Chris Morling / Dot Zinc Limited
Why file an unwinnable UDRP case?
A suggestion to why this happens is succinctly summed up in the article relating to the UDRP case over the 4-letter domain name YISH.com
1. Do not file frivolous UDRP complaints.
Launching UDRP cases is not without risk to the complainants - some aggrieved domain name owners resort to seeking damages through the court system:
Had Burness Paull ever done a UDRP case before?
A search on www.DNDisputes.com (DNDisputes.com is a web portal where domain name disputes filed in WIPO World Intellectual Property Organization are presented) for the search term “Burness Paull”
| VOYS.com UDRP case
Another recent UDRP case (Decision January 2018) involving a 4 letter .com domain name was the VOYS.com UDRP case.The case was denied and the Complainant Voys B.V. was found guilty of Reverse Domain Name Hijacking. Case No. D2017-2136.