Case Number: D2019-2738
Complainant: In Loco Tecnologia da Informação S.A.
Represented by: Montaury Pimenta Machado & Vieira de Mello
A Brazilian-based information technology firm has been found guilty of Reverse Domain Name Hijacking, even though the company tried withdrawing its UDRP complaint after the respondent tendered his filing. In Loco Tecnologia da Informação S.A., which was represented by the firm of Montuary Pimenta Machado & Vieira de Mello, originally filed its complaint against the respondent, whose name is privacy protected, on November 7, 2019.
In Loco Tecnologia da Informação S.A. argued that it had a right to use the domain inloco.com, which was originally purchased by the respondent in 1999, because it had a trademark on the phrase “in loco”, although the trademark dated only to 2017, and had because the company been doing business under the “In Loco” name since 2014. Despite the time differential, In Loco’s attorneys argued the respondent, a resident of the United Kingdom, had purchased the domain in bad faith and was using it in bad faith for keeping his name hidden behind privacy protection, a common service offered by nearly all domain name registrars.
However, the respondent, through his own counsel, Briffa Solicitors, replied that In Loco and its representatives had made several attempts, since 2014, to purchase the inloco.com domain name, and asserted the complainant was well aware it could not have rights to a domain name, using a common Latin phrase, the registration for which predated the company’s business by 15 years. The respondent further argued the phrase, itself, was a very common Latin phrase, and pointed to his ownership of other domains, of other common Latin phrases, to support his investment ownership interest in the domains.
Upon the respondent’s filing, however, the complainant requested its case be withdrawn without prejudice. The panel, electing to follow established court procedures used in the United States and other nations, instead permitted the respondent to file an objection, which was done. In so doing, the panel agreed that it would be unfair to permit the complainant to withdraw without prejudice, given that it could easily bring the case once more, before another panel, seriously prejudicing the current domain owner.
“Such ‘eleventh hour withdrawals’ of complaints without prejudice invites the filing of potentially abusive complaints for strategic reasons,” the panelists wrote. Consequently, the panel decided it must rule on the respondent’s request for a finding of Reverse Domain Name Hijacking.
That decision compelled the panel to move forward with making a ruling on the UDRP filing, as a finding of RDNH can only happen if the complainant first loses his case. In Loco Tcnologia da Informação S.A. did lose its case, with the case coming down to the dates of the domain registration versus the date In Loco began business.
“Respondent could not have acted in bad faith to take an advantage of Complainant’s alleged IN LOCO mark that did not exist in January 1999 when Respondent registered the disputed domain name,” the panel wrote.
The panelists, in their finding of Reverse Domain Name Hijacking, lambasted the complainant for attempted to hide from the panel the fact it had tried to buy the domain name, several times, from the respondent.
“Complainant and/or its representative made several prior attempts since 2014 to purchase the disputed domain name from Respondent, and in fact wrote directly to Respondent using his name — a fact that was not disclosed by Complainant in its Complaint,” the panel wrote.
Due to the unusual circumstances surrounding the complainant’s request for a withdrawal, the three-member panel did not hand up its RDNH ruling until March 24, 2020, nearly four months after the original UDRP filing.
Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2738