In a recent ruling, a panelist for the World Intellectual Property Organization (WIPO) concluded that VGW Holdings Limited, an Australian-based internet gaming business, engaged in reverse domain name hijacking. The firm lodged a complaint against the proprietor of vgw.com, a resident of the Republic of Korea.
Since 2010, VGW Holdings Limited has administered its online portal, vgw.co, where it provides digital renditions of traditional casino games. The business operates under various brand names, namely Chumba Casino, Global Poker, and Luckyland Slots. VGW has multiple trademark registrations for its VGW mark in many countries, exhibiting its dedication to preserving its brand identity.
Nevertheless, the WIPO panelist, Kathryn Lee, issued a ruling in favor of the domain owner, Hyundoo Shin, a Republic of Korea resident, who registered vgw.com in 2002, years before the inception of VGW Holdings Limited. The substantial gap between these dates proved crucial in influencing Lee’s decision.
Lee stressed that, given that the contentious domain name was in existence prior to VGW Holdings’s acquisition of trademark rights and establishment, Shin could not possibly have registered the domain name with the intent of infringing upon VGW Holdings Limited’s trademark.
Lee Castigates Attempted Reverse Domain Hijacking in Groundbreaking Verdict
In the Administrative panel decision document, Lee penned: “The fact that the Complainant knowingly filed a complaint devoid of merit, and proceeded with it nevertheless, appears to be a deliberate strategy to oust a registered domain-name holder of a domain name”.
Lee pointed out this particular fact and concluded that the complaint was initiated with malicious intent, revolving around an attempt at reverse domain name hijacking, effectively constituting a misuse of the administrative proceeding.
The adjudication serves as a reminder of how crucial the domain name registration date is in intellectual property battles. In this particular case, VGW Holdings Limited could not substantiate that Hyundoo Shin procured the domain name in bad faith, largely due to the considerable time lapse between the domain registration and the company’s foundation.
Moreover, this ruling highlights the potential fallout for complainants who embark on reverse domain name hijacking. Reverse domain name hijacking ensues when a complainant initiates a dispute, fully aware that they will not be able to establish bad faith registration or usage of the domain name by its owner. Such pursuits can culminate in a declaration of reverse domain name hijacking, which was the outcome in this instance.
