ProjectPay Pty Ltd tries to hijack an upside-down domain name – Domain Name Wire
There was an obvious flaw in this cybersquatting affair.
A World Intellectual Property Organization panel has determined that ProjectPay Pty Ltd, attempted to reverse the hijacking of the projectpay.com domain name.
The company uses the ProjectPay.com.au and ProjectPay.co.uk domains to promote its construction payment services. It registered these domains in 2017 and later, and claims to have started offering its services in 2015.
But the case was dead on arrival as Registrant registered the domain in 2001. Therefore, Respondent could not have registered the domain in bad faith to target Plaintiff. The Complainant did not mention these dates in his filing.
The three-member panel wrote:
The Commission finds that Complainant in fact knew, or at least should have known at the time he filed the Complaint, that he could not prove one of the essential elements required by the UDRP, namely that it is very clear that the Respondent registered the Domain Name many years before the Complainant existed, filed and registered the Mark.
The Complainant (or rather his attorney) must have been fully aware of the cumulative requirements of registration and bad faith use when filing the Complaint. Indeed, the Complainant clearly confirmed that the Domain Name was registered in 2001 and wrote under the heading “The disputed Domain Name was registered and is used in bad faith”: “The Respondent registered and uses the Name disputed domain in bad faith, pursuant to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules”. And to conclude: “All of Defendant’s activity described above clearly constitutes bad faith registration and use of the disputed domain name under the Policy and Rules for several established grounds.”
Dentons Canada LLP represented ProjectPay Pty Ltd and John Berryhill represented the domain owner.