The Intricacies of WIPO Case D2008-1173: A Study in Domain Name Disputes and Reverse Domain Name Hijacking

In the WIPO Case D2008-1173, the complainant, 1 Model Management, LLC, based in New York, New York, United States, faced off against the respondents, L.A.S. Inc., Latifa Aadess, and 1 Models LLC, based in Huntington Beach, California, United States. The dispute centered around the domain name “onemodels.com”, registered with Intercosmos Media Group d/b/a directNIC.com. This case was decided on October 24, 2008, with the panel comprising Richard G. Lyon, Stefan Naumann, and Lynda J. Zadra-Symes.

1 Model Management, LLC, a prestigious modeling agency in the United States, asserted rights to trademarks including ONE MODEL MANAGEMENT, ONE MODEL, and 1 MODEL MANAGEMENT, with applications filed in May 2007 claiming a first use in commerce in December 2001. These applications were pending before the United States Patent and Trademark Office (USPTO). The complainant operated its principal website at “www.1modelmanagement.com”.

The respondents established a company named “1 Models, L.L.C.” in December 2001 and registered the disputed domain name in August 2002. They used the domain name to provide portfolio space for models and aspiring models. Respondent’s services were available without charge to the models, aiming to facilitate their exposure and potential employment.

The complainant argued that the domain name was confusingly similar to its trademarks and accused the respondents of not having legitimate interests in the domain name. They alleged that the respondents’ use of the domain name misled consumers into believing there was an affiliation with the complainant, thus constituting bad faith in registration and use.

On the other hand, the respondents contended that the complainant lacked rights in its claimed marks, having filed for registration with the sole purpose of initiating this dispute. They asserted their rights to the disputed domain name, stemming from their registered corporate name and continuous use since 2002. The respondents denied any competition or claimed association with the complainant and refuted the allegations of bad faith.

The panel concluded that the complainant failed to establish the necessary elements under the Policy. There was no evidence or substantial allegation that the respondents were aware of the complainant or its business and marks at the time of registering the domain name in 2002. The panel noted that the respondents’ business was not obvious cybersquatting and indicated no imitation or copying or passing off. Furthermore, the panel found that the complaint was brought in bad faith, constituting an attempt at Reverse Domain Name Hijacking (RDNH) and an abuse of the administrative proceeding. This finding was reinforced by the complainant’s inaction for five years and the lack of substantial evidence on any Policy element.

The case D2008-1173 is a significant example of the complexities involved in domain name disputes and the critical examination required to ascertain the presence of bad faith and legitimate interests in such matters. It also highlights the importance of the timing of trademark registrations and the existence of prior legitimate business activities in determining the outcome of domain name disputes.

In the WIPO Case D2008-1173, the complainant, 1 Model Management, LLC, based in New York, New York, United States, faced off against the respondents, L.A.S. Inc., Latifa Aadess, and 1 Models LLC, based in Huntington Beach, California, United States. The dispute centered around the domain name “onemodels.com”, registered with Intercosmos Media Group d/b/a directNIC.com. This…