Andrew Etemadi, Founder and Chief Technology Officer for Eyemagine Technology LLC v. Clough Construction and Deanne Clough WIPO Case No. D2012-2455
It could not be said that findings of Reverse Domain Name Hijacking (“RDNH”) are common or frequent. But they do occur and it may not be too much to read into decisions to say that they are becoming a little more frequent. That trend, if there is such a trend, together with the prospect of being sued for engaging in Reverse Domain Name Hijacking, should cause parties and their legal advisers to make sure that a case has a reasonable basis before proceeding. Another salutary lesson on the dangers of filing a UDRP complaint without a reasonable basis for doing so has just been delivered by the panelist in Eyemagine Technology LLC v. Clough (above) who made a finding of RDNH.
The Complainant won on the first leg but lost on the second and third legs, mainly on the basis of lack of evidence and weaknesses in the evidence. Respondents requested a finding of Reverse Domain Name Hijacking.
The panelist set the scene by stating the rules and quoting from the WIPO Overview, Second Edition.
The general rule was said to be “[A] finding of [RDNH] is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. . . . [S]uch a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.” The panelist quoted in support carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 citing Futureworld Consultancy (Pty) Limited v. On-line Advice, WIPO Case No. D2003-0297. Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v.liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598 (finding RDNH where the complainant alleged its first use of the mark was four years after the domain name had been registered). However, a finding of RDNH is always within the panel’s discretion. See Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (finding that the facts justified RDNH but panel determined “to leave the parties as it found them” because both parties made misrepresentations to the panel).
As is often the case, the panel looked at factors from both sides, but was influenced by a few specific issues that tilted the scales. Principally they were that the Complainant must have known:
“… that it could not establish Respondents’ lack of legitimate interests or Respondents’ bad faith registration and use for at least one of the Domain Names.” This was so because:
“(1) Complainant clearly should have known that Respondents’ registration of <eyemagine.com> pre-dated any claims in the mark Complainant might have had.
(2) Complainant itself cited Respondents’ use of the mark and Domain Name in conjunction with the (Respondent’s) business several years prior to any rights that Complainant purports to have acquired.
(3) To the extent that Complainant believed it might establish registration in bad faith for the <eyemagine.info> Domain Name on a constructive notice theory, Complainant should have known that UDRP panels have required that bad faith be predicated on actual notice by respondent absent more evidence that the mark is famous (see WIPO Overview 2.0, paragraph 3.4).
(4) To the extent that Complainant believed it could convince the Panel to depart from requiring bad faith registration and use conjunctively—on the theory that Respondents were relying upon an initial good faith registration to use a domain name in bad faith with impunity—Complainant clearly should have known that, at minimum, it would need to bring evidence of Respondents’ abuse. The sole evidence Complainant appears to have brought is Respondents’ general unresponsiveness to the bargaining tactic of offering the same amount of money to purchase the Domain Names three times.”
It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.”
The case is significant in that it shows the sort of factors a panel will look for to decide if the Complaint has been filed in bad faith. Perhaps more importantly, it shows that Complainants (and presumably Respondents in other situations) will be taken to know, not just the Policy and the Rules, but “clear Policy precedent” as well.
Some might think this is going a long way and that it gives no guidance to what a Complainant is presumed to know when there are conflicting decisions and no “consensus view” on the question in issue, although perhaps this is why it is only “clear” precedent that the parties are presumed to know.
Moreover, are UDRP decisions “precedent “?
Even if they are not, it might be wise to brush up on prevailing decisions before filing a Complaint.
 See our post on this subject in October 2012