In July of this year, the Indian company Hike Private Limited filed a complaint against the domain hike.app with WIPO (World Intellectual Property Organization) and demanded the transfer of this disputed domain for trademark protection reasons.
The domain was registered on 5 May 2018 by a private individual from the USA. When reading the respective statement of reasons of the complainant, one might first think that the domain was correctly registered. Finally, however, it can be seen that the reasoning is very flimsy and attempts are made to trick WIPO and the complainant. This process shows once again how important the correct strategy is and how essential the relevant documentation is.
The complainant has developed an app called "Hike Messenger" or "Hike" for short and was able to count 100 million users for the first time in January 2016. The complainant registered several word and word/figurative marks with the term "Hike" as well as 168 domains which contain the word or, like www.hike.in, consist solely of the term. The complainant alleges that the domain name is identical or confusingly similar to her trademarks, that the respondent has no rights or legitimate interest in the domain and that the domain has been maliciously registered and is used with malicious intent. There is also a direct link to the top-level domain (TLD) .app, which is for apps and app developers. She also firmly believes that the respondent must have known the app and the name. Finally, there are expansion plans (trademark registration and purchase of an American company) in the USA, the app is one of the most downloaded apps in the Google Play Store and the company is valued at 1.4 billion US dollars. Furthermore, it claims that a large majority of the domains registered by the respondent contain known company names and infringe trademarks worldwide and lists them. Coincidentally, these domains were all registered on the same day. As a further indication of malice, the complainant states that the domain was for sale for USD 15,000. She substantiates her statement with various screenshots: one shows that when accessing the disputed domain, including a "Buy it now" button, it is shown that this domain is for sale for USD 15,000. Another screenshot of the respondent's website shows a long list of .app domains for sale at different prices. The disputed domain is also listed here. Although the original offer to sell the disputed domain has been removed from the website in the meantime, the respondent actively offers it and over 300 other domains for sale on its website.
The respondent reacted to the proceedings and requested that the complaint be dropped. First of all, the word "hike" is a verb and a general dictionary word which has nothing to do with the complainant's messenger service and therefore there can be no exclusive rights to such a domain name. In addition, the respondent has researched, but the product is not a known messenger service in the US and is not displayed on the first hit page in the US when Google searches for "hike". Furthermore, he explains that he has bought a package of 300 .app domain names in order to develop different app projects. He might also be willing to sell the disputed domain name and establish his planned hiking app under another name. The price for the domain is determined according to its estimated value of the respective domain as according to the company valuation of an interested buyer. He also makes it clear that he did not intend to infringe the trademark rights of third parties and did not plan to sell the domain. In return, he never approached the trademark owner or others directly.
WIPO agrees that the disputed domain is confusingly similar to the trademark. However, it is not satisfied with the evidence of the respondent that the domain has been registered with a legitimate interest. On the one hand, he states that he wants to develop app projects, on the other hand, the domains from his package, which do not give rise to any projects, are to be sold. He does not deny that the prices are far above the registration fees. Furthermore, there are no rights to a name on the basis of a registration. An e-mail correspondence with first thoughts of a possible project development of hike.app is not sufficient proof for WIPO. Finally, it states in its statement of reasons that the respondent's argumentation would have accepted one, two or three domains. With such a large number of domains, which the complainant has listed and proven by screenshots, it is difficult for WIPO to follow the reasoning. The respondent has failed to provide sufficient evidence to prove its legitimate interest. Furthermore, WIPO considers it proven that the domain name is used with malicious intent and therefore decides that the domain hike.app should be transferred to the complainant.
As things stand today (10/08/2018), the domain has not yet been transferred and still shows the information that a corresponding project is to be published shortly. If anyone follows the link of the responsible company, many more app-Domains with corresponding sales prices are quickly displayed. The domain snack.app leads the list with 32,500 USD by the way. We wouldn't be surprised if this complaint isn't the last one for the listed domains. We recommend interested parties to make screenshots as evidence in the preparation of a complaint.
The complete decision with detailed reasons can be found on the WIPO website.