Glykka LLC filed a UDRP at the WIPO, for the matching .com of a trademark they received registration for in 2012.
The problem: SignEasy.com was registered in 2005 by its China based owner, establishing prior use for the domain.
An interesting twist in the case is the original registration of SignEasy.com in 2002, by the same Respondent, who let it expire by accident. He was able to reclaim the domain in 2005.
Meanwhile, the Complainant uses the web site GetSignEasy.com where it provides electronic signature apps for tablets and smart phones.
The makers of Sign Easy(tm) were unable to get SignEasy.com via UDRP.
The Respondent maintained a temporary page for years, and even displayed a landing page with a tablet just like the Complainant; when the UDRP notice was served, he changed the content with a disclaimer about how SignEasy.com is not related to the Glykka LLC product and trademark.
Very crafty.
The sole panelist, Sebastian M.W. Hughes, made an interesting notice:
“There can be no doubt, on the evidence, that the Respondent has registered the disputed domain name for opportunistic reasons. It appears that the disputed domain name was dormant for many years and that, upon finding out about the Complainant and its business, the Respondent set up the Website, which features prominently the Trade Mark (albeit in a font different to the font used by the Complainant) and, at first glance, mimics the look and feel of the Complainant’s Website . Furthermore, upon being contacted by the Complainant’s representatives, the Respondent has clearly offered to sell the disputed domain name for as much as USD 80,000.”
Despite the obvious affirmation that the Respondent was aware of the Complainant’s existence and products, Mr. Hughes ordered that the domain SignEasy.com should remain with its registrant. He refused to deliver a finding of Reverse Domain Name Hijacking, however.
For the full text of the case about the SignEasy.com UDRP, click here.
