Recent Case Notes & Commentary

Swing and Miss: Dissenting Panelist Finds Reverse Domain Name Hijacking

Tip Vy Spots LLC Vy v. Super Privacy Service c/o Dynadot

Case No. D2016-0872; June 29, 2016


An unusual provision in the UDRP allows a panel to find not only that the claim fails and the respondent wins, but that the complainant should never have brought the complaint at all. Such a finding-called Reverse Domain Name Hijacking- is tantamount to a finding that the Complainant commenced the proceedings not just in bad faith, but in such bad faith that it constitutes an abuse of the administrative proceedings. 


It is a comparatively rare event to have a finding of RDNH made, but all practitioners should be aware that they can be made and are made and that it is always an option for a panel that feels a Complaint has been brought improperly.


No monetary damages or other sanction follows from the finding of RDNH, but it is embarrassing all the same. Unsuccessful complainants therefore argue vigorously against a finding of RDNH being made against them.


The present case is a good example of where a Complainant was aware, or should have been aware, at the time of filing its complaint, that it could not prove at least one of the essential elements of the Policy, but figures it will try its luck anyway.  In this case, its luck ran out. Instead of thinking it would get a free swing to acquiring the domain name, the Complainant instead got an RNDH finding against it from one of the three panelists sitting on the case.


Background

The Complainant had a trademark, REVEEL, registered with the United States Patent and Trademark Office (‘USPTO’) on April 5, 2016.


The Respondent  purchased the disputed domain name, <reveel.com> on February 2014 and it was subsequently transferred from the Respondent to a Registrar, Dynadot, on January 8, 2015.  


The Panel in this defended case was a 3 person panel. It had no trouble deciding unanimously, that the Complainant succeeded on the “low threshold” issue of identical and/or confusingly similar. Although they were naturally more contentious, the Panel likewise unanimously found that the Complainant failed on both rights or legitimate Interests and bad faith.


The Complainant had therefore had a serious loss. But did it also run the risk now of having an adverse finding of RDNH made against it?


Reverse Domain Name Hijacking

Although in agreement with the other two members of the Panel on the substantive issues, one Panelist took his ruling one step further and made a finding of Reverse Domain Name Hijacking against the Complainant.


The Complainant admitted it was fully aware that the domain name was registered well before it registered its trade mark.  This was virtually an admission that the domain name could not have been registered in bad faith and that it had a Plan B, i.e., that if it could not buy the domain name for a palatable amount, it would commence UDRP proceedings.


The Panelist, quite correctly, ruled that bringing an action in full knowledge that it was impossible for the Respondent to have registered the dispute domain name in bad faith, and yet to allege that it had, was harassment of the domain name holder and an attack on the integrity of the entire UDRP process.


It is often said that RDNH findings, such as in the present case, should be applauded, as potential Complainants should be discouraged from having a free swing at taking control of a domain name, when fully aware that they lack the evidence to support the claim. The UDRP should not, it is said, be used as a mechanism to harass legitimate owners in an attempt to acquire a desired domain name, especially after the complainant has tried and failed to buy it. The present case is a good example of just how right those comments can be-if the evidence of harassment is there, as it was in the present case.


Also beware: a panel; can make a finding of RDNH against a complainant even although the respondent has not asked for it. The panel, in other words, can act on its own motion: Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.

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