Wednesday , August 17 2022

Wex Inc. tries reverse domain hijacking wex.com

Big tech company tried to get a valuable three letter domain through UDRP.

Picture of a gold skull and crossbones with the words "reverse domain name hijacking"

Wex Inc. (NYSE: WEX), a $7 billion market cap technology company, tried to reverse domain name hijack the valuable domain name wex.com.

That’s the conclusion of a three-person National Arbitration Forum panel after reviewing the evidence.

The domain owner registered the domain in 1994 for a business. Wex Inc. claimed it has trademark rights dating to 1989, but it first registered a trademark with Wex in it in 1999, five years after the domain was registered.

While it could have common law rights dating to 1989, it failed to submit evidence showing this. The panel wrote:

It is true that the Complainant started what looked as if it would be a case for showing that it had some trademark rights in WEX prior to June 25, 1994. It does this by submitting that it, the Complainant, has “continuously used the WEX mark since at least as early as 1989.” (emphasis added). The Panel therefore reasonably expected that there would then be some evidence produced to support that proposition.  Complainant says that its evidence to that effect is contained in Exhibit 3 to the Complainant, but that document shows no such thing as that the Complainant has “continuously used the WEX mark since at least as early as 1989.” It shows, and says so in plain language, leaving no room for doubt, that the Complainant had promotions on its website for WEX as a trademark on April 7, 2022 as that was the date on which the screenshots were taken. The Complainant has curiously not adduced any evidence of its use of the word prior to or even close to the date when the domain name was registered.  That evidence, which is the only evidence submitted of the Complainant’s actual use of the word “Wex”, does not show any use of the word as a trademark or, for that matter, in any other sense, prior to the date when the domain name was registered on June 25, 1994. It certainly shows nothing remotely like the assertion that Complainant had used the word as a trademark from 1989.

In fact, the panel noted the company’s history as stated on the website:

WEX was founded in Portland in 1983 as Wright Express Corp. It later moved to South Portland, became a publicly traded company in 2005 and took on its current name in 2012. (emphasis added)

The Complainant registered its website WexInc.com in 2011 and tried to buy Wex.com from the Respondent in 2018.

In finding reverse domain name hijacking, the panel wrote:

In the present case, the Complainant not only failed to prove its case but omitted substantial matters of evidence of which it should have been aware and which it should have appreciated that it had an obligation to address. Some of its evidence was misleading. Any proper assessment of the case should have resulted in cogent evidence being assembled to establish basic issues but that was clearly not done. Instead, the Respondent was put to the time and cost of defending a case that had little if any merit. Moreover, the case is a classic Plan B case, where an overoptimistic complainant tries to buy a domain name, is rebuffed and then decides to harass the domain name holder by making unmeritorious allegations against it.

Pierce Atwood LLP represented Wex Inc. IPLA, LLP represented the domain owner.

Post link: Wex Inc. tries reverse domain hijacking wex.com

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