25 March 2013

Reverse Domain Name Hijacking

"It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules"--

WIPO Domain Name Decision: D2012-2455" . . . . Respondents have requested a finding of Reverse Domain Name Hijacking (“RDNH”).

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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.17. The respondent 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. On-line 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 complainant 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 (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).

In this case, there are several indications that Complainant was acting in bad faith. Given the record, it strains credulity that Complainant did not know or should not have known that it could not establish Respondents’ lack of legitimate interests or Respondents’ bad faith registration and use for at least one of the Domain Names. The Panel, in particular, notes:

(1) For the <eyemagine.com> Domain Name, the several-year gap between Respondents’ domain name registration year (1996), Complainant’s earliest filing year for its mark registrations (2009), Complainant’s earliest “use in commerce” year for its mark registrations (2003), and the year in which Complainant allegedly acquired common law rights in the mark (2003)—Complainant clearly should have known that Respondents’ registration of <eyemagine.com> pre-dated any claims in the mark Complainant might have had.

(2) For the <eyemagine.com> Domain Name, Complainant itself cited Respondents’ use of the mark and Domain Name in conjunction with the deck and patio construction business several years prior to any rights that Complainant purports to have acquired.

(3) To the extent that Complainant believed it might establish registration in bad faith for the <eyemagine.info> Domain Name on a constructive notice theory, Complainant should have known that UDRP panels have required that bad faith be predicated on actual notice by respondent absent more evidence that the mark is famous (see WIPO Overview 2.0, paragraph 3.4).

(4) To the extent that Complainant believed it could convince the Panel to depart from requiring bad faith registration and use conjunctively—on the theory that Respondents were relying upon an initial good faith registration to use a domain name in bad faith with impunity—Complainant clearly should have known that, at minimum, it would need to bring evidence of Respondents’ abuse. The sole evidence Complainant appears to have brought is Respondents’ general unresponsiveness to the bargaining tactic of offering the same amount of money to purchase the Domain Names three times.

It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.

7. Decision
For the foregoing reasons, the Complaint is denied. Additionally, for the foregoing reasons, the Panel finds that Complainant engaged in Reverse Domain Name Hijacking."

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