Law firm Bartko Zankel Bunzel & Miller tries reverse domain name hijacking

A law firm filed a cybersquatting claim in abuse of the Uniform Domain Name Dispute Resolution Policy.

A World Intellectual Property Organization panelist has ruled that the law firm Bartko Zankel Bunzel & Miller tried to reverse domain name hijack bartko.com.

The firm filed a UDRP cybersquatting case against the domain name in an effort to upgrade its domain from bzbm.com. It failed miserably.

The law firm probably didn’t know that the person who owned the domain had the last name Bartko. It could have figured this out if it did a historical Whois search at DomainTools. Regardless, once the registrar verified the registrant’s identity, that should have been the firm’s cue to drop the case.

Instead, it filed its amended complaint that added the domain owner’s name but retained language saying the registrant’s identity is “unknown” and that the Complainant “is unable to ascertain the true purpose of the registrant’s use in the domain name at issue.”

Even though Bartko Zankel Bunzel & Miller has an intellectual property practice, it failed to convince panelist Scott Blackmer that it has common law rights in merely “Bartko.” The company has filed a trademark application for it, but it’s still pending.

Yet, in its filing, it states, “Complainant has been prohibited from using its registered trademark as a domain name.”

Perhaps even more stunning is that the law firm has filed a trademark application at the U.S. Patent and Trademark office for Bartko.com, a domain it clearly doesn’t own. It’s on an intent-to-use basis, so perhaps it thought it would win this UDRP and then get a trademark for the domain.

The domain owner didn’t respond to the case. But Blackmer found this case worthy of reverse domain name hijacking:

This Complaint is unusual in that it was brought both by and on behalf of a law firm that practices in the field of intellectual property law. The Panel calls attention to the fact that the Complaint was filed with this required certification under Rule 3(xiii), signed by counsel:

“Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

The Respondent did not submit a Response in this proceeding or request a finding of RDNH, but the Panel finds compelling reasons to do so.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).

Here, the Complaint is plainly deficient. The cursory presentation of “Factual and Legal Grounds” is devoid of references to the Policy or the WIPO Overview and does not begin to address the difficulties faced by a UDRP complainant with a common law mark against a registrant who acquired a domain name by all appearances identical to his family name nearly a quarter of a century ago.

The Complaint offers minimal evidentiary support for its unregistered mark. There is no evidence of sales or advertising under the mark. The public recognition of the law firm evident on the Complainant’s website refers to the Complainant by several other names and abbreviations, not by the claimed mark. Thus, the Complaint could not establish standing under the first element.

The likelihood of the Complainant prevailing on the other two elements was similarly improbable. Once the Registrar identified the underlying registrant as the Respondent Jan Bartko, an individual with a family name corresponding to the Domain Name, the Complainant should have amended the Complaint to address the obvious implications for its arguments concerning the Respondent’s prima facie legitimate interests and bad faith. The Complainant amended its Complaint, but only to add Mr. Bartko’s name to the caption. The Amended Complaint continues to say, under the second element, that the registrant’s identity is “unknown” and that the Complainant “is unable to ascertain the true purpose of the registrant’s use in the domain name at issue.” In any event, the Complainant infers that the Respondent must have meant to sell the Domain Name to the Complainant – despite making no attempt to do so in 24 years. The Complainant offers no evidence concerning the notoriety of its business in 1998 (or any later acquisition of the disputed domain name, if there were any), which would be necessary to persuade a panel that the Respondent really chose the Domain Name in the hope of exploiting the Complainant’s reputation rather than because the Domain Name matched his own.

The Complainant makes incongruous arguments and egregious misstatements. Perhaps the most glaring is this:

“Complainant has been prohibited from using its registered trademark as a domain name. Instead, Complainant has been forced to use the domain name, www.bzbm.com, which has made it more difficult for clients, including potential customers, to access the Complainant’s proper web page, and has unlawfully prohibited the Complainant from using its preferred domain name.”

The Complainant does not have a registered trademark. It has only recently applied for two trademark registrations. The Complainant repeatedly uses “BZBM” and other names different from BARTKO on its own website and in its press releases and USPTO specimen. The WhoIs database and the WayBack Machine show that the Complainant has been using bzbm.com since 2004.

The Panel finds that the Complainant brought the Complaint in bad faith, within the meaning of Rule 15(e), in an attempt at Reverse Domain Name Hijacking.

 

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