WIPO Claim Number: FA2003001889900
April 29, 2020
In D’Agostino Supermarkets v. Louise Murphy, a small chain of supermarkets in the US not only lost the case, but was found to have engaged in reverse domain name hijacking (RDNH). So it was a double loss.
The finding draws attention to the difference between bringing a UDRP claim which happens to fail and intentionally bring a claim that was doomed to fail. In other words, simply losing because the panel took a different view of the evidence than the complainant, or if the evidence is not strong enough, will not result in a finding of RDNH.
But knowing that the claim will fail or that it cannot be proved, can result- and often does- in a finding of RDNH. In short, unreasonable ignorance is not a defence against RDNH. If the Complainant knew – or more relevantly – ought to have known that its claim was never going to succeed, panels can conclude that the claim should never have been brought and was therefore an abusive use of the UDRP.
In the D’Agostino case the Complainant/ chain of supermarkets had been prudently advised of the situation regarding the domain name <dagostino.com> which was the family name of the Respondent, i.e. the registrant of the domain name against whom it was contemplating bringing the claim. That should have been a warning light. It should have indicated to the Complainant that it would probably not succeed, given that people like the Respondent will always have rights to the use of their own name in a domain name and part 4(a)(ii) of the UDRP requirements cannot be satisfied. That is to say, the supermarket could not have shown that Louise Murphy lacked rights to the domain name and its lawyer should have known this. In fact, an attorney had made that fact clear to the Complainant, but it filed the complainant anyway, with a different attorney. In their submission, the second attorney referred to irrelevant US statutory law and demonstrably failed to understand the jurisdiction of the UDRP, including the fact that a UDRP claim is not the same as a claim of trademark infringement, which cannot be resolved by a UDRP panel.
If a Complainant is professionally represented, a higher standard will be applied to the RDNH analysis with respect to whether the Complainant should have known their claim would fail. At the end of the decision in D’Agostino Supermarkets v. Louise Murphy, the panel writes “[a]ny complainant and even more so any professional representative of a complainant should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent…”.
In other words, if you-or your lawyers-knew or should have known that the case would fail, you are at risk of a finding of RDNH being made against you. Be warned.