'wow.com.au' Case highlights reverse domain name hijacking issues

A World Intellectual Property Organization panel has dismissed the complaint of WOW Audio Visual Superstores Pty Ltd (WAVS) against the registration of the domain name 'wow.com.au' by Comonoz Pty Ltd (Case DAU2007-0003). The panel found that the complainant had failed to establish each of the requisite grounds and went on to hold that the complaint was brought in bad faith and constituted reverse domain name hijacking.

'Reverse domain name hijacking' is defined in Rule 1 of the '.au' Dispute Resolution Policy (auDRP) as "using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name".

The panel noted that there are several features which, if present, would entitle a panel to make a finding that the proceeding had been brought in bad faith and hence as an attempt at reverse domain name hijacking.

The panel identified the following features from earlier decisions:

• The complainant, by the time the complaint was filed, had knowledge of all the facts necessary to establish that the respondent had a legitimate interest in the disputed domain name (K2r Produkte AG v Trigano) and there is evidence of harassment or similar conduct by the complainant in the face of such knowledge (Sydney Opera House Trust v Trilynx Pty Limited).
  
  
• Attempts to obtain the transfer of a domain name which is a generic word (PROM Software Inc v Reflex Publishing Inc and Goway Travel Limited v Tourism Australia), and/or in a situation where the domain name reflects a mark that is likely to have multiple legitimate uses (Smart Design LLC v Hughes).
  

After considering these earlier decisions, the panel held that: "The difficulty for the complainant in the application of these criteria is that it seems to have fallen foul of all of them."

The panel's reasoning was as follows:

• Complainant WAVS's claim was based on an alleged unregistered trademark in the term 'WOW', used by itself and as part of other expressions, but in all cases a generic and widely used word that is capable of a wide variety of meanings.
  
  
• Even if a case were made out for such a trademark (a result which the panel described as "a wildly optimistic expectation"), WAVS's own evidence was that it did not trade under that name until after the respondent, Comonoz, registered the domain name in question.
  
  
• WAVS alleged that Comonoz had no rights or legitimate interests in the domain name. However, it did not reveal that its former solicitors had earlier written to Comonoz acknowledging that the latter had "legitimately obtained the domain name 'wow.com.au' (and that it did not) intend making a complaint under the auDRP complaint process".
  
  
• When the complaint was filed, it specifically alleged that Comonoz was in breach of each of the possible grounds of bad faith set out in Paragraph 4(b) of the auDRP. The panel considered that such allegations should not have been made unless there were reasonable grounds for believing that they were true. The panel did not accept that there were reasonable grounds for making any of the allegations and described them as "baseless".
  

Cases of reverse domain name hijacking are comparatively rare. Panels have stated that they are reticent normally to make such a finding. However, a case such as this raises the question as to whether a panel should be able to make a cost order against the complainant.

Julian Gyngell, Julian Gyngell, Wahroonga