Analysis of WIPO Domain Name Dispute Case D2020-1786

The World Intellectual Property Organization (WIPO) case number D2020-1786, decided on September 15, 2020, is a compelling example of domain name disputes involving allegations of reverse domain name hijacking (RDNH). The case revolved around the domain name “spase.com,” with the complainant being Sahil Gupta and the respondents being Michal Lichtman and Domain Admin, Mrs Jello, LLC.

Parties Involved and Procedural History

Sahil Gupta, the complainant, based in the United States, operated a business focused on converting photographs into 3D models. The business, incorporated as Spase, Inc. in February 2019, trades under the name “Spase.” Gupta claimed common law trademark rights in SPASE, citing various forms of media presence and internet activity.

The respondents, also from the United States, included Michal Lichtman and Mrs Jello, LLC. The disputed domain name was registered on February 3, 2005, and the respondents contended that it was used for parking pages to generate pay-per-click revenue.

Contentions of the Complainant

Sahil Gupta argued that “spase.com” was identical and confusingly similar to his SPASE mark. He maintained that his customers associated his 3D modeling services with “Spase,” and that the respondent had no rights or legitimate interests in the domain name, as it had not been actively used for several years. Gupta accused the respondent of being a “domain squatter” and engaging in bad faith registration and use of the domain name.

Contentions of the Respondent

The respondent refuted the accusations, claiming the case was an instance of reverse domain name hijacking. They asserted that “Spase” was a generic term and that they had registered the domain name in 2005, well before Gupta started using the SPASE mark. The respondent also maintained that they had been using the domain name in good faith for pay-per-click revenue generation.

Panel’s Decision

The panel, comprising William R. Towns, Knud Wallberg, and The Hon Neil Brown Q.C., found the case to be more complex than a typical domain name dispute. They acknowledged the respondent’s registration of the domain name in 2005, predating Gupta’s claimed use of the SPASE mark. The panel concluded that Gupta had not proven that the domain name was registered in bad faith.

Furthermore, the panel recognized that the respondent’s use of the domain name for generating revenue from a common term did not constitute bad faith. Consequently, the complaint was denied, and the case was marked as an example of an attempt at reverse domain name hijacking.

Conclusion

This case highlights the nuances and complexities involved in domain name disputes, especially those involving claims of RDNH. It underscores the importance for complainants to substantiate their claims with robust evidence, particularly regarding the timing of the trademark’s use and the domain name’s registration.

For more details on this case, you can visit the WIPO website’s case summary for D2020-1786.

The World Intellectual Property Organization (WIPO) case number D2020-1786, decided on September 15, 2020, is a compelling example of domain name disputes involving allegations of reverse domain name hijacking (RDNH). The case revolved around the domain name “spase.com,” with the complainant being Sahil Gupta and the respondents being Michal Lichtman and Domain Admin, Mrs Jello,…