Here’s another example of why filing UDRP complaints should be left to the experts. Even lawyers experienced in trademark litigation may not know their way around this tricky field.

At first glance, it would appear that Eyemagine Technology would have a good chance in its UDRP complaint, filed with the World Intellectual Property Organization (WIPO), against Clough Construction concerning the domains Eyemagine.com and Eyemagine.info. However, the Complainant made a number of critical errors that jeopardized its chances of reclaiming the domain name.

Eyemagine is a California-based design and tech firm specializing in ecommerce, and it owns both design and character marks for the term EYEMAGINE. The Respondent, which makes custom home decks, is also a California company, and its current Eyemagine domain names redirect to its construction company homepage.

While the Complainant might own character and design marks for EYEMAGINE, they were not registered until 2012 and 2009, respectively, more than a decade after Clough Construction registered Eyemagine.com in 1996. Thus, its claim that the domain names were registered in bad faith seems dubious, given that the Complainant’s company did not even exist then.

Additionally, the Respondent urges the Panelist to consider charging the Complainant with Reverse Domain Name Hijacking (RDNH), given the fact that after negotiations on the sale of the domain name between the parties broke down, the Complainant filed a UDRP complaint close to the year-end holidays and without telling the Respondent’s attorneys. The Respondent believes that the Complainant was trying to cut response time short to have a better chance of winning the UDRP complaint.

In the end, the dual filings seem to reveal two approaches to the UDRP Complaint. The Complainant attempted to play dirty, being dishonest in its filing and attempting to limit the Respondent’s ability to properly defend itself. The Respondent, on the other hand, clearly and concisely responded to each of the Complainant’s allegations and made a strong case for RDNH. The WIPO Panelist sided with the Respondent and, in finding the Complainant guilty of RDNH, said “It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.”

This complaint should be a lesson to all brand owners to play by the rules and to hire legal counsel specifically experienced in UDRP complaints. Ultimately, the truth will emerge.

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
Decisions: “Eye” for Detail

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