After a UDRP case has reached its conclusion and the panel is about to find that the Complainant has failed, because it cannot prove essential features of its claim, a panel often turns its mind to whether it should find that the claim not only failed but that it should never have been brought, because it was brought in bad faith and to harass the Respondent to turning the domain name over.
It is in the discretion of the Panel whether or not it should make such a finding, known as Reverse Domain Name Hijacking RDNH). It is not enough that the Complainant lost. The Respondent has to show that the case should never have been brought.
A recent decision shows how a panel will make up its mind on this difficult issue. The decision, by US panellist M. Kelly Tillery, Esquire, is the case of Walker Edison Furniture Company LLC v. WARNE, MARTIN (FA1804001784459, 23 May 2018). The home décor complainant used the FOREST GATE mark to promote its business and took exception to the respondent having registered the <forestgate.com> domain name; it was the name of the Respondent’s suburb in the UK.
The Complainant lost because it was not able to prove it had a registered trademark, but only an application for a trademark; it failed in its attempt to prove a common law trademark and the domain name was registered before the date when the Complainant first started its business under the trademark that it claimed. There was really no evidence when it first started in business under this name, although it was clear that the business had been founded seven years after the domain name was registered.
This showed that the Complainant knew or should have known that the claim would fail and justified a finding of RDNH.
Just for the record, there are other decisions you can cite on making out a case for RDNH .
See NetDepositVerkaik v. Crownonlinemedia.com, (D2001-1502, WIPO 19 March 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, (FA 250232, Forum 28 May 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).