09 November 2012

Reverse Domain Name Hijacking

Interesting case of "Reverse Domain Name Hijacking" against the complaint in the Tarheel Take-Out, LLC v. Versimedia, Inc., Case No. D2012-1668 (excerpt below):

WIPO Domain Name Decision: D2012-1668: Reverse Domain Name Hijacking -
"Paragraph 15(e) of the 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 [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.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See WIPO Overview 2.0, section 4.17. The respondent generally bears the burden of demonstrating that a complainant brought a complaint in bad faith. Id. “WIPO panels have declined to find [RDNH] in circumstances including where: [. . .] the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint.” Id.
“[A] finding of [RDNH] is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. [. . .] [S]uch a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.” carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 citing Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297. Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598 (finding RDNH where the Claimant alleged its first use of the mark was four years after the domain name had been registered). However, a finding of RDNH is always within the panel’s discretion. See Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (April 18, 2005) (finding that the facts justified RDNH but panel determined “to leave the parties as it found them” because both parties made misrepresentations to the panel).
Finally, “[i]t is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.” Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555. In this case, the only alleged rights in TAKEOUT.COM that could have arisen prior to Respondent’s registration of the disputed domain name stem from Complainant’s use of TARHEEL TAKE-OUT EXPRESS at the domain name <tarheeltakeout.com> for services rendered in North Carolina. In its trademark application, filed roughly six years after Respondent registered the generic or commonly descriptive term “takeout” as a domain name, Complainant alleges that its first use of TAKEOUT.COM occurred in 2010. Given the record, it strains credulity to believe that Complainant did not know or should not have known that it had no trademark rights in TAKEOUT.COM that could serve as the basis for this Complaint. It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules. For the foregoing reasons, the Panel makes a finding of Reverse Domain Name Hijacking."

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