SmartMark.com.au auDRP Complaint Denied – Guilty of Reverse Domain Name Hijacking!

Back in early-May 2019, Domainer reported on Jonathon Horne of Domain Protector and Terrific.com.au Pty Ltd “taking over” a Registrar Connection at Drop.com.au so he could win back a domain name he accidentally allowed to expire; Company.com.au(.)

Even though there were bids of up to $27,777 across all platforms to acquire the dropping domain, you can read all about how the auDA-endorsed Drop Bidding system was “manipulated” so Jonathon Horne managed to win the domain name back for himself for $6.50. Management at Drop.com.au stated at the time they were “blindsided”…

Fast forward a few weeks later, to late-May 2019…

Jonathon Horne’s Domain Protector company accidentally let yet another domain name be released to the public drop auctions.

That’s right… Just like Company.com.au(,) Smartmark.com.au was accidentally sent to the drops by “Domain Protector”.

Trouble was, this was not his domain name. It was a client’s.

[At this point you may be thinking… Domain Protector? Seriously?]

Long story short, when I saw the domain name appear on the drops, I assumed the previous registrant no longer wanted it. So, I registered the domain name for my company, Registry Australia, that provides Registration Services in relation to domain names, business names, company names and trademarks.

As a diligent CEO and Entrepreneur, I endeavour to register many domain names directly associated with my various businesses in the name of brand protection and possible future development opportunities.

A couple of days after I acquired it, a $200 offer was made on behalf of Jonathon Horne to try and acquire this domain back. The offer came from someone at Drop.com.au(.) This implied to me at that stage that Drop.com.au management was still in close contact with Jonathon Horne and Terrific.

In September 2019, it appears Stuart Gibson from the law firm Mills Oakley was engaged to try to acquire the Smartmark.com.au domain back.

Stuart Gibson offered $2000 to buy the domain name, via email.

My team and I had no intention of selling it, so, we decided to just ignore the threat of “We are about to file our client’s Complaint!

In October 2019, Mills Oakley submitted an auDRP Complaint against my company, in an attempt to try to clawback the domain name.

I can only imagine how many thousands of dollars and how much time was spent in this process.

I must admit, this process was just as gruelling as when I successfully denied previous complaints from wanna-be domain thieves (https://domainer.com.au/wallabies-rugby-lose/) and (https://domainer.com.au/ogio-com-au-audrp-complaint-denied/) and (https://domainer.com.au/rottnestisland-com-au-complaint-denied/).

Defending auDRP complaints are NOT FUN. But it’s better than letting people try to steal your domain name, right?

Finally, 4 months after the auDRP process had begun, just this week (February 2020), the three auDRP Panelists, Andrew Christie, Alan Limbury and John Swinson, decided “the Complaint is denied“.

The majority of the panel also decided that the complaint was brought in bad faith and was an abuse of the administrative proceeding (Reverse Domain Name Hijacking!). The dissenting panelist to a RDNH finding was John Swinson (former Chair of auDA’s Policy Review Panel) – though he did comment that “the complaint was poorly drafted“.

You can read the full decision here.

In more detail, the panel stated;

the Complaint was both silent on key matters and riddled with unexplained inconsistencies in its pleading and evidence. Notable among these is the Complainant’s claim that it “owned the Domain for approximately five years” when the historical WhoIs records show that the Complainant’s authorised representative, Stuart Gibson, was the registrant of it in January 2105 and that another entity, Hudson IP Pty Ltd, was the registrant of it in July 2015 and in February 2019. This unsubstantiated and potentially false claim of ownership of the disputed domain name, together with the numerous other unexplained inconsistencies and potential falsities in the Complainant’s evidence identified above, lead the majority of the Panel (Mr. Christie and Mr. Limbury) to conclude that the Complainant did intentionally attempt to mislead the Panel by omitting relevant evidence.

Accordingly, the majority of the Panel finds and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

It gives me a lot of satisfaction when I (as an everyday Australian businessman) can prevail against the might and resources of a big legal firm. And when the decision states that the Complainant’s case (lead by Stuart Gibson of Mills Oakley) was “riddled with inconsistencies in its pleading and evidence“, this makes it even better.

Moral of the story?

Defend your domains!

If someone wants your domain name, THEY CAN PAY FOR IT! (if you’re willing to sell it).

18 thoughts on “SmartMark.com.au auDRP Complaint Denied – Guilty of Reverse Domain Name Hijacking!

  • Avatar
    February 27, 2020 at 6:59 pm
    Permalink

    Congrats on the win Rob

    Like
    5 people like this.
    Reply
  • Avatar
    February 27, 2020 at 7:15 pm
    Permalink

    Why do all these IP experts insist on learning things the hard way?

    Embarassing to lose against someone who is self-represented.

    And why don’t clients realise that lawyers will often be happy to take your money, regardless of how weak your case is.

    Of course they’re gonna think you have a case, if they don’t think you have a case then there’s no hope of them making a dime is there?

    Think!

    Like
    6 people like this.
    Reply
  • Avatar
    February 27, 2020 at 8:01 pm
    Permalink

    Add this to the RDNH.COM list of guilty Reverse Domain Name Hijackers.

    Lawyers guilty of aiding and participating in RDNH? They need to be exposed, named and stopped.

    http://www.HallOfShame.com

    Like
    4 people like this.
    Reply
    • Avatar
      February 27, 2020 at 10:45 pm
      Permalink

      Far out why do lawyers keep getting it wrong?

      It either means they don’t know their stuff or they do their stuff and are happy to take a chance for their client and hope that the the arbitrator(s) get it wrong.

      And this is why a 3 person panel is crucial, as it reduces the chances of one arbitrator getting it wrong.

      BUT is looking like you don’t know your stuff and having your name as a lawyer tarnished by an actionable finding against your client of reverse hijacking really worth the $12k in fees?

      Like
      5 people like this.
      Reply
  • Avatar
    February 27, 2020 at 8:25 pm
    Permalink

    Congratulations Rob. Your efforts help all domain investors.

    Domain Protector indeed. Haha haha. Embarrassing.

    Wonder who paid the lawyers legal fees?

    Jeff

    Like
    8 people like this.
    Reply
  • Avatar
    February 27, 2020 at 8:39 pm
    Permalink

    Thanks guys.

    Any time any one of us is attacked for simply owning a domain name, feel free to sign off your return email to the wanna-be domain thieves with “DomainThieves.com.au“.

    Let these types of people click on that link and educate themselves before they waste their time and money.

    Like
    7 people like this.
    Reply
  • Avatar
    February 28, 2020 at 4:18 am
    Permalink

    Well done Rob!

    Like
    4 people like this.
    Reply
  • Avatar
    February 28, 2020 at 6:02 am
    Permalink

    Bound to be a few high priced lawyers spluttering over their long blacks and caffe lattes this morning.

    I also imagine that this outcome will cost Domain Protector a few bucks. If I was his client, I’d have my hand out.

    Like
    6 people like this.
    Reply
  • Avatar
    February 28, 2020 at 9:20 am
    Permalink

    So John Swinson (partner in charge at the Brisbane office of King & Wood Mallesons) finds that the domain was used in bad faith. Yet the Presiding Panelist Professor Andrew Christie (Chair of Intellectual Property at the Melbourne Law School / University of Melbourne) finds differently. As did another distinguished lawyer. Thank goodness for 3 member panels.

    Like
    6 people like this.
    Reply
  • Neddy
    February 28, 2020 at 10:09 am
    Permalink

    This is a solid and justified win Robert, and yet another great decision / precedent for domain investors.

    I know that I am not alone when I thank you for your efforts.

    Whilst you did absolutely nothing wrong, what does surprise me is why Jono and Co didn’t try harder to sort this out amicably from the start? You are all traders / wheeler dealers, and this could have (and should have) been sorted out immediately.

    I feel very sorry for Jono’s client (or perhaps ex-client now). They did nothing wrong, yet they lost their domain. I wonder how that has affected their business?

    Like
    5 people like this.
    Reply
    • Avatar
      February 28, 2020 at 10:20 am
      Permalink

      I don’t feel sorry for her, by the sounds of things she couldn’t even get her name right on the ASIC record and/or failed to update ASIC when her name changed.

      Like
      4 people like this.
      Reply
      • Neddy
        February 28, 2020 at 10:39 am
        Permalink

        As I understand matters, this domain was perhaps mistakenly deleted by Jono or one of his staff. He only realised the problem when it was too late.

        That’s why I feel sorry for his client – not for any other reason.

        Like
        3 people like this.
        Reply
  • Ed Keay-Smith
    February 28, 2020 at 11:54 am
    Permalink

    Congrats mate, another well defended domain name to set an example for all.

    Legend!

    Like
    4 people like this.
    Reply
  • Avatar
    February 28, 2020 at 12:44 pm
    Permalink

    Today another great generic “trademark” related domain name dropped to the public.

    QuickMark.com.au

    I registered it.

    There are literally hundreds of generic “*mark” domains I may use in the future to provide trademark registration services.

    Brand protection for your current and possible future ideas is so important.

    And it truly is so easy to get the domain name you desire. Reach out and work out a great deal with the current owner to buy one that’s already taken, or watch the domain name drop platforms EVERY DAY and pick up some great names no one wants anymore.

    Like
    Anonymous likes this.
    Reply
  • Avatar
    February 28, 2020 at 1:23 pm
    Permalink

    You’ve got to love the $200 token offer followed by the big spend on the complaint.

    Like
    3 people like this.
    Reply
  • Scott.L
    February 28, 2020 at 2:27 pm
    Permalink

    auDA is responsible for educating the public about the DNS – the new board should probably start thinking about holding an Expo or seminars around these important issues. Afterall, its in auDA’s interest to reduces their own complaint management costs, and provide the public with informative direction. Unless, of course, this type of complaint is already monetised by those who actually want the public to remain dumb, namely lawyers.

    Congrats on the win Robert.

    Like
    3 people like this.
    Reply
  • Avatar
    February 28, 2020 at 3:46 pm
    Permalink

    Well done! Keep up the good fight.

    Like
    2 people like this.
    Reply

Leave a Reply

Your email address will not be published. Required fields are marked *