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Recent Case Notes & Commentary

Domain Names Registered before Trademarks: Vexatious Claims and Reverse Domain Name Hijacking

Case No. D2019-2441 December 2, 2019

All too often, UDRP claims are destined to lose before they begin, even when undefended. They all share one thing in common: The Respondent registered the domain before the Complainant acquired its trademark rights.

The following case is one of those instances, and through its analysis we can see why such cases are destined to lose, whether they are themselves abuses of the administrative process, and the recourse the UDRP provides for such vexatious litigation in Reverse Domain Name Hijacking.

In this case, the Complainant, Advice Group, registered the trademark upon which it relied for its claim in December 2016, while the disputed domain <> was registered by the Respondent in September 2014.

For a complaint to succeed, the Complainant must prove that the Respondent both used and registered the disputed domain in bad faith, by trading on the goodwill or otherwise attacking the Complainant’s marks.

With some two years between domain and trademark registration, it would have been impossible for the Respondent to have registered the domain in bad faith, quite simply because there was no trademark in existence to potentially attack at the time.

Despite the Complainant’s lengthy submissions, and even with the fact that the case was undefended, as the Respondent had not filed a Response, there was no way of getting around this fact. The Complaint therefore failed, and rest of the case was moot, except for one issue:

Reverse Domain Name Hijacking (RDNH)

In this case, the Panel issued a finding of RDNH against this complainant without hesitation

RDNH concerns whether a Complainant has abused the UDRP administrative process in bringing its claim. Its equivalent in court proceedings is where an unsuccessful Plaintiff not only loses the case, but has is ordered to pay the Defendant’s costs. A finding of RDNH is a censure against a Complainant who uses the UDRP in bad faith to attempt to deprive a domain-name holder of their domain name.

While losing a case is not grounds alone for a finding of RDNH, those with no chance of winning often elicit a finding of RDNH when they are considered to be in bad faith, or they harass a respondent.

In the case at hand, the Complainant should have known it had no chance of success. In addition to its fatal flaw, there were some significant other deficiencies which led to a finding of RDNH, despite the claim not even being defended. The Complainant cited proceedings that falsely claimed to involve the Respondent, it provided no evidence to support its assertions, and the disputed domain was made up of generic English terms which would have made it unlikely for the Complainant to win. This deficient complaint was considered an abuse of UDRP process and thus the panel found RNDH.

While a finding of UDRP is normally requested by a respondent, Panels can and often increasingly consider RDNH sua sponte. Indeed, some observers say that there is an obligation on panels to consider RDNH, whether it has been asked for or not. This is seen from those decisions where there is an abuse of the UDRP process that is is evident from the evidence and the Panellists have come to such a conclusion of their own accord.

Finally, while a finding of RDNH has no practical nor financial implications for a Complainant, it is often said that they play a role in limiting vexatious litigation by censuring and possibly embarrassing Complainants and their counsel. That is especially so when:

(a) the case was particularly hopeless;

(b) the Complainant and it counsel should have known they could not prove the case;

(c) the Complainant’s side has put forward false or misleading allegations; and

(d) where the case was a Plan B case, i.e. one where the Complainant had tried but failed to buy the domain name and had then moved on to Plan B, namely bringing the UDRP claim.

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