John Swinson (WIPO Panelist) has found Mighty Men Pty Ltd, trading as “Opalshop”, to have attempted reverse domain name hijacking for the domain OpalShop.com. The company currently uses the domain OpalShop.com.au
John Swinson found that the Complainant didn’t show that the domain was confusingly similar to a trademark for which it had rights, and also that the domain was not registered and used in bad faith.
The Complainant also failed to disclose prior communications with the Respondent, including an offer to buy the domain name last year.
Mr Swinson found the Complainant ‘Mighty Men’ guilty of Reverse Domain Name Hijacking and wrote;
It appears to the Panel that the Complainant has omitted material evidence from the Complaint. For example, according to the Response, the Complainant made an offer to buy the Disputed Domain Name from the Respondent in 2019. The Complaint is silent on this. The Complaint misrepresents the Chinese trade mark application as a word mark, and also did not make it clear to the Panel that the application had not proceeded to registration. The Complaint has also been drafted in a way that gives the impression that the Complainant does not know who is operating the website at the Disputed Domain Name, when (according to the Response) there have been various prior dealings between the Parties.
The Panel’s view is that the Complainant is seeking to use the UDRP to attempt to opportunistically obtain a domain name that has been legitimately used for over 20 years in connection with its ordinary meaning. The Complainant’s conduct verges on bad faith, appears to have been brought to harass a known competitor, and in the Panel’s view constitutes an abuse of the administrative proceeding.
WIPO Ruling
‘Mighty Men Pty Ltd’ appear to own the following Australian domain names;
Mightymen.com.au (Registrant’s name is Robert Short and email is sales@pumpshop.com.au)
PumpShop.com.au (Registrant’s name is William Polson and email is info@aiad.com.au)
Aiad.com.au (Registrant’s name is William Polson and email is bpolson@aiad.com.au)
