Picoliter found guilty of reverse domain name hijacking

In Picoliter Inc v Andrew Sauter, National Arbitration Forum panellist Tyrus R Atkinson has issued an important decision on reverse domain name hijacking in a case involving the domain name 'picoliter.com'. Picoliter Inc filed a Uniform Domain Name Dispute Resolution Policy (UDRP) suit against Andrew Sauter even though it registered the PICOLITER mark after Sauter had registered the domain name.

Both parties manufacture micro-fluidic devices. Sauter registered 'picoliter.com' in February 2001 and began using the domain name to operate a website posting substantial content about his company. Several months later, Picoliter established its business and registered the US trademark PICOLITER (a scientific term used in the industry for the measurement of liquids). Picoliter argued that although Sauter registered the domain name without knowledge of its future interest in the trademark, once the mark had been registered, Sauter had a duty to sell Picoliter the domain name or at least cease using it.

Atkinson found Picoliter's arguments to be "untenable". He said Sauter has a reasonable, legitimate interest in the domain name and uses it to make a bona fide offering of goods and services. Moreover, Picoliter was aware that it did not own the PICOLITER mark at the time Sauter registered the domain name. Based on these findings, Atkinson concluded that Picoliter was attempting to take the domain name from Sauter - a proper registrant under the UDRP - for its own profit and use, and was therefore guilty of reverse domain name hijacking.

This decision emphasizes that a complainant must establish that it holds prior rights in a trademark which is reflected by the disputed domain name. A complainant is acting in bad faith if it cannot demonstrate prior rights and files a complaint with full knowledge of a respondent's legitimate rights in a domain name.

For discussion of a similar case and outcome, see Windsor Fashions found guilty of reverse domain name hijacking.

Jeanette Lee, Bereskin & Parr, Toronto

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