TRTL.COM

 
     
 

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.

  
 


See the news stories about the TRTL.com domain name UDRP case:

John Berryhill gets another RDNH win. Company that owns TRTL.co.uk tried to get TRTL.com through UDRP
TRTL.com : After UDRP victory, domain owner lashes out at Complainant.
Domain Names Identical to Trademarks But No Likelihood of Confusion
Coolside Limited Of Glasgow Found Guilty Of Reverse Domain Hijacking.

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.

WIPO (The World Intellectual Property Organization) found Coolside Ltd (Directors: Michael Corrigan & David Kellock) guilty of Reverse Domain Name Hijacking.

Coolside's representatives in this case were Intellectual Property Lawyers Megan Briggs & Colin Hulme of Scottish Law Firm Burness Paull LLP.

 Megan Briggs & Colin Hulme lost their case which the WIPO panelists called "an abuse of the administrative proceeding".

 
 

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."

and

"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:"........

  
 
 
 
TIMELINE
4th March 2000   Over 16 years ago, Get On The Web Limited (a company incorporated 6th October 1998) registers the domain name TRTL.com  
30th September 2003   TRTL.com is used as a website portal for Health-Club.net until 30/09/2003 when it is decided to offer the domain name for sale for the first time.  
2nd December 2010   Michael Corrigan & David Kellock 's company Coolside Limited is incorporated.  
12th September 2013   Coolside Limited registers the domain TRTL.co.uk  
22nd September 2013   Coolside Limited files for UK trademark "TRTL"  
7th September 2014   Coolside Limited files for US trademark "TRTL" with First Use Date 20/10/2013 and First Use in Commerce Date 01/05/2015  
19th February 2016   Ignoring the clear disclaimer on the TRTL.com website requesting to be informed of any party claiming registered trademark rights, Coolside Limited and Burness Paull LLP, without having made any contact whatsoever with Get on The Web Limited, went straight to filing a UDRP case against Get On The Web Limited regarding the domain name TRTL.com.  
25th February 2016   WIPO notifies Get On The Web Limited of the UDRP challenge.  
25th February 2016  

The same day, Megan Briggs of Burness Paull LLP, being aware that Get On The Web would have just received notification of the UDRP from WIPO, sends an email (c.c. Colin Hulme) to Get On The Web Limited offering £250 for the TRTL.com domain name.

  
25th February 2016   Attorney John Berryhill representing Get On The Web Limited replies to Megan Briggs and Colin Hulme of Burness Paull LLP advising them of the frivolous nature of their case and recommending them to withdraw their UDRP challenge.  
9th March 2016   Despite having been advised of the futilty of their case, lawyers Burness Paull LLP make no attempt to withdraw the case but instead plough on and send a hastily prepared "supplemental submission" to WIPO (unauthorised by the UDRP process).  
14th March 2016   Coolside Limited and their lawyers Burness Paull LLP have had an eternity to prepare and submit their case, but under the UDRP rules Get On The Web Limited have a mere 20 days to respond. Surprised by Burness Paull's almost last minute unauthorised "supplement", attorney John Berryhill seeks a 4 day extension to reply with WIPO to respond which is granted.  
20th March 2016   Get On The Web Limited submits their response.  
7th May 2016   WIPO's decision is published denying Coolside Limited's complaint and finding Coolside Limited guilty of Reverse Domain Name Hijacking.  


 

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.
Accordingly the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
 
 
 

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".

There are numerous sources for "Reverse Domain Name Hijacking".  Amongst these are RDNH.com and HallOfShame.com (which includes a list of some of those found guilty of trying to Reverse Hijack a Domain Name in which they had no legal rights. In other words they tried to bully the rightful owners into relinquishing their property and forcing these innocent parties to spend thousands to defend what they already own).

Before contemplating filing a UDRP case, Complainants should read the CircleID.com article “The Hidden Perils of Filing a Baseless UDRP Complaint”.

 
See also Does the UDRP do more harm than good? and The UDRP: A Problem at the Core of the Internet

The Internet Commerce Association (ICA) has published its proposal for
UDRP REFORM.

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.
As the panelists stated (see above) "....the Domain Name cannot conceivably have been registered in bad faith".

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.

It probably irritates UDRP panelists that the Telstra case is so often inappropriately trotted out in such cases totally outside the context of the case being considered. In the Telstra case, the proceeding involved a senior mark (i.e. complainant's trademark was registered before domain name registered). In the TRTL.com case the complainant's trademark was registered many, many years after the domain name was registered.

Should have done their homework:

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
NAF Case Number: FA1603001664293 also got a Reverse Domain Name Hijacking decision with the panelists stating:
"Before filing a complaint under the Policy, a complainant should undertake at least a cursory review of the circumstances under which it might prevail. Clearly, precedence established under countless previous UDRP rulings suggests that there is no chance to obtain a positive outcome when there is no evidence presented to establish that a complainant has rights in a mark prior to registration of the disputed domain name."

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
Once You’ve Filed a UDRP, There May Be No Going Back :

1. Do not file frivolous UDRP complaints.
Complainants typically file unwinnable UDRP complaints because either they do not understand the UDRP rules or they hope to coerce a domain registrant to transfer the domain. Both can lead to findings of RDNH. …..


2. Research your case before filing.
Asserting trademark rights that do not pre-date the disputed domain name’s creation date is one of the most common reasons UDRP panels find RDNH. Here, the fact that the domain name was created more than a decade before Mr. Wang owned any rights in the term “Yish” should have at least prompted further investigation.

Launching UDRP cases is not without risk to the complainants - some aggrieved domain name owners resort to seeking damages through the court system:   

LottoStore.com & LottoWorks.com Case
Lotto Sport Italia must pay $237k attorneys’ fees in reverse domain hijacking case.
AustinPain.com Case
A Pain Management Medical practice paid $25,000 to settle a lawsuit stemming from a UDRP that it filed.
Airzone.com Case
In the airzone.com case the plaintiff was awarded $40,000 dollars.
BeautifulPeople.com Case
Having lost a UDRP case and being found guilty of Reverse Domain Name Hijacking, people associated with the Beautiful Magazine company filed a lawsuit and lost and was ordered to pay $65,000 in legal fees.


  
 
 
 

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”
reveals only this case.

  
   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 .