John Berryhill won on behalf of his client a reverse highjacking finding in a recent WIPO case.

The case bought by a Swiss company which is a “”large manufacturer of consumer foods, which it markets under the trademark and business name HERO. The Complainant was founded in Switzerland in the late 19^th century. Its mark and trade name were derived from the prefixes of the names of its two original founders. From the 1980s, the Complainant expanded its business into various countries of Europe, North Africa/Middle East, the United States of America, Canada, and South America.””

The panel discussed the fact the the word “Hero” is a generic word in the English language:

“””The basic fact of the Respondent residing in a jurisdiction in which “hero” is a common English word, should have at least suggested the possibility of the Respondent having a legitimate interest in the disputed domain name based on its generic / dictionary meaning.””””

Then the panel discussed that is was unlightly that the owner of the domain ever heard of the Swiss company:

“””””Fundamentally, bad faith could be found if the Respondent knew or, in appropriate cases, ought to have known of the Complainant. (See, for example, Moari Television Service v. Damien Sampat, in which the then panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited decisions to similar effect.)

In this case there is no evidence, nor any reasonable inference, which could establish that the Respondent knew of the Complainant or intended to exploit the Complainant’s mark. The Complainant makes a number of arguments in this respect, but the Panel finds them all unpersuasive.”””””

However, while the Complainant provided a substantial amount of evidence of the reputation of its mark in various jurisdictions, it did not provide such evidence in relation to the United States of America, where the Respondent resides””

“””As such, there would need to be clear evidence that the Respondent had registered the disputed domain name to profit intentionally from the goodwill in the Complainant’s mark. There is no such evidence at all in this case.”””

“”””Even if the Respondent had taken some active steps to conduct a trademark or other search, it is not clear that this would have uncovered the Complainant’s trademark. The Respondent is resident in the United States of America, while the Complainant is a Swiss company. When the disputed domain name was registered (1995), the Complainant did not appear to have a strong business presence in the United States of America. At the time the disputed domain name was registered, few trademark offices of the world provided the public with online access to its trademark registry, and search engines were not as developed as they are today.”””””

Finally in finding that this case was an attempt at reverse highjacking the panel said:

“””The Respondent requests a finding of reverse domain name hijacking against the Complainant. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

The facts of this case suggest that it should have been apparent to the Complainant, on the basis of its own investigations, that it could not reasonably succeed in bringing a complaint under the Policy.

The disputed domain name is a dictionary term which is also potentially generic in English. Added to this, not only were its arguments not supported by relevant evidence in relation to the second and third grounds of the Policy, various evidence provided by the Complainant itself undermines its case. For example, the Complainant provided evidence that the Respondent communicated with it using the “[name]@hero.com” address. The Complainant also provides various evidence of the Respondent’s websites over the years, including websites clearly identifying the Respondent’s business name as “Hero Consulting”, and offering “@hero.com” email accounts. This evidence would suggest that the Respondent had a legitimate business interest in the disputed domain name. The Complainant has been less than frank in not addressing these possibilities, if even to put its own case in relation to them.

For these reasons the majority of the Panel finds that the Complainant has engaged in reverse domain name hijacking.””””

We congratulate Mr. Berryhill, one of our favorite attorneys on this decision