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Recent Case Notes & Commentary

Reverse Domain Name Hijacking- Another Decision

Findings by UDRP panels of Reverse Domain Name Hijacking ( RDNH) are neither rare nor frequent. They essentially depend on the facts in the individual case. So, findings of  RDNH, when they are made, should be noted, which enables practitioners to compare the facts of cases where the finding was made with the facts of the case that they have under consideration. A recent decision where a unanimous finding of RDNH was made is Airpet Animal Transport, Inc. v. Marchex Sales, Inc / Brendhan Hight, NAF,Claim Number: FA1211001470056, where the domain name was I was a member of the panel.It is apparent from the finding of RDNH that the panel was influenced by the facts that showed the Respondent had not registered or used the domain name in bad faith.That finding was instrumental in the finding of RDNH.

The panel pointed out that the Respondent had already shown that it had a legitimate interest in the domain name and went on , specifically, to say the following:

“Respondent additionally claims its good faith is clear, given the fact its registration of the domain name (July 2, 2001) pre-dated Complainant’s PET EXPRESS trademark application (which was filed November 2, 2009). It should be noted Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case. Complainant did not disclose Respondent’s use of the mark in its trademark application.”

That extract speaks for itself. The Complainant had a trademark for PET EXPRESS but the Respondent had registered the domain name over 7 years earlier.

Then again , the Panel said:

”Lastly, Respondent asserts Complainant has misrepresented numerous “facts” in the Complaint and declarations. Respondent argues the personal knowledge alleged by Mr. Botten is blatantly false as he was not living in the United States or employed by the (non-existent) Complainant prior to 2005. Respondent asserts Mr. Botten’s declaration therefore contradicts his own biography and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.”

It is certainly true Complainant was conclusory in its initial submission (and that is being charitable). Respondent rightly pointed out Complainant’s claims were not possible as stated because Complainant was not formed until 2005. While Complainant could have stated all of this in Complainant’s initial submission, it chose not to. The question is why not? It seems Complainant did this to improve its chances in this UDRP proceeding. Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to either the USPTO or the Panel. Once again, the question is why not? Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.

The Panel finds Policy ¶4(a)(iii) NOT satisfied.”

The decision of the Panel also sets out the detailed submissions of the parties and if you read the decision you will get a flavour of the whole case and the factors leading to the Panel’s finding in favour of the Respondent.

The detail will also show you the value of research that enables you to present useful factual material to the Panel that can be instrumental in the decision.

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