Datacom denies it engaged in Aussie 'reverse domain hijacking', WIPO disagrees
- 10 March, 2020 10:20
New Zealand-based ICT services giant Datacom is denying it tried to "reverse hijack" a domain being used by an Australian company Datacom Communications.
Datacom found itself on the short end of a decision, released last week by the World Intellectual Property Organization (WIPO), with Datacom Communications retaining the domains.
Worse, Datacom was found to have attempted to reverse hijack the domains through the procedure.
Reverse domain hijacking involves using the the domain appeal system and policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
"As a trademark owner it’s important for Datacom to actively protect its brand name in the public space," a Datacom spokesperson told Reseller News.
"We tried to engage with the owners of the two domain names in question but were unable to proceed so felt the only way forward was to use the WIPO authorised process.
"It wasn’t until this point we discovered Datacom Communications had been trading with that name prior to Datacom entering the Australian market."
However, the WIPO panel wrote that it seemed "more likely than not" that the Datacom Australia or its New Zealand parent were aware of the respondent’s use of the “Datacom” name in relation to its computer and communications businesses from at least the time of its Australian incorporation as Datacom Australia Holdings on August 22, 2000.
"At that time, either the complainant or its agents would very likely have searched the ASIC register and would have found that Datacom Communications Pty Ltd had been on the register since 1994," the panel wrote.
"Had the complainant undertaken a domain name registration search at that time it would also have found that the disputed domain name datacom.net.au had been registered to the respondent since November 6, 1997...
"The panel’s view in this regard is only reinforced by the complainant’s counsel’s confirmation in its correspondence on September 10, 2019, to the respondent’s counsel in advance of negotiations, that '[r]est assured our client has taken into account your client’s use of Datacom over time'.”
Datacom was founded in New Zealand in 1964 and has traded in Australia since 1994 under the trade mark "Datacom".
It owns Australian registered trade marks for Datacom, filed in 2009, and for Datacom Systems, filed in 2018, as well as other variations.
One disputed domain name, datacom.net.au, was registered on November 6, 1997, and the other, datacomaccounting.net.au, registered on September 15, 2002. Both redirect to websites for businesses operated by the respondent.
Datacom complained that it was the owner of the Datacom trademark in Australia.
It argued that the disputed domain names either wholly or partly contained its mark and that they should therefore be considered as being identical or confusingly similar to its trademark.
Datacom submitted that Datacom Communications had no registered trademark rights in the disputed domain names and submitted evidence in that regard.
The fact that the respondent had registered a business name or company name did not of establish that it had rights or legitimate interests in the disputed domain names that corresponds to its business name, Datacom argued.
Datacom submitted that it was "inconceivable" that the respondent chose to incorporate the Datacom name in the disputed domain names by coincidence.
On the contrary, the respondent did so in order to confuse and deceive potential consumers with an aim of disrupting the complainant’s business, Datacom submitted.
Datacom Communications, however, responded that it had never heard of the complainant before the proceedings and did not register the disputed domain name in order to disrupt the complainant’s business or to divert internet users from the complainant’s websites.
The respondent maintained that it had been trading under the “Datacom” name since 1987.
It provided a newspaper article from May 1988 in support of this submission that it said showed its bona fide use of the “Datacom” name since then in connection with its Datacom Technologies, Datacom Communications, and Datacom Accounting Services businesses.
"This activity, submits the respondent, was 13-20 years before the complainant entered the Australian market according to the ASIC records, which indicates that the earliest of the complainant’s entities, Datacom Australia Holdings Pty Ltd, was registered on August 22, 2000," WIPO's decision says.
"In addition, the respondent submits that it has been operating and using the 'Datacom' names for 22 years before the complainant’s September 2009 trade mark application."
Finally, the respondent asserted that the complaint amounted to an attempt to "hijack" the disputed domain names and requested the panel rejects Datacom's complaint.
The panel found the domains were "confusingly similar", as Datacom argued, but failed to meet the onus upon it to demonstrate that the respondent had no rights or legitimate interests in the disputed domain names.
While, given that finding it didn't have to, the panel went on to agree with Datacom Communications that the dispute did amount to an attempt at "reverse domain hijacking" given the history of Datacom Communications' legitimate prior use of the domains.