Should more orders be made for Reverse Domain Name Hijacking (RDNH)? Complainants do not incur any actual penalties for findings of Reverse Domain Name Hijacking against them. So, when should orders for RDNH be made?
Globeway LLC v. Domain Administrator / Vertical Axis Inc., FA1407001571651, September 5 2014[1].
Domain name at issue: <globeway.com>
Facts: The Complainant ran a business that tried to enhance Internet users’ ability to conduct better web searches. The Complainant wanted the domain name for its business and filed a UDRP Complaint. However, it stumbled at the first hurdle. It did not have a registered trademark and therefore had to try to establish a common law trademark. It failed in this, because the limited evidence it could produce did not measure up and did not show secondary meaning in the two very generic and common words that went to make up the domain name.
The Respondent had acquired the domain name nearly 10 years before Complainant made any use of the alleged common law mark, so it was in a strong position. Moreover, it claimed that <globeway.com> was a common and generic term, which corresponded to its, the Respondent’s, business in domain names. The Respondent further argued that there was not enough supporting evidence to demonstrate that the Complainant was the exclusive user of the ‘GLOBEWAY’ mark.
The Respondent won because the Complainant was not able to prove the first element, that it had a trademark to support its claim. The panel said that the two common, generic and descriptive terms, ‘GLOBE’ and ‘WAY’, required very strong evidence in order to establish secondary meaning, which was just not there.
Because the Complainant failed on the first element, the Panel did not need to decide the other two elements.
Then the real fight began. Should the Panel make a finding of RDNH, as the Respondent asked it to do? The Panel decided it would make the finding.
Reverse Domain Name Hijacking is defined in Paragraph 15(e) of the UDRP Rules as the use of the Policy in bad faith that “constitutes an abuse of the administrative proceeding”. The Panel found this case was indeed an abuse in light of the Claimant’s failure to take basic inquiries to ascertain the validity of the Respondent’s domain name registration before it filed its claim.
In particular, the Panel put part of the blame on the Complainant’s lawyer: the information showing the accurate history of Respondent’s domain name registration.
[1] The editor of Domain Times was a member of the 3 person panel in this case.