A UDRP panel explained the duty complainants have to research the ownership history of a domain name.
A World Intellectual Property Organization panel has found that French company ITF engaged in reverse domain name hijacking over the domain name veripro.com.
The case raises an important question: what duty does a complainant have to undertake research to determine when the domain owner acquired the domain?
In UDRP, the date the current registrant acquired the domain is compared to the date of the complainant’s trademark. If the domain was acquired prior to the complainant getting substantial rights in the mark, then it can’t be proven that the domain was registered in bad faith to target the complainant.
In the veripro.com case, the Complainant argued that the domain owner acquired the domain in 2013. It based this on a change of use of the domain.
But the Complainant could have easily ascertained that this was not when the domain was acquired. As the panel points out, readily available (albeit paywalled) historical Whois data shows that the owner acquired the domain in 2007. The Complainant also could have sent a cease & desist letter or other pre-dispute correspondence to ascertain the acquisition date.
In finding reverse domain name hijacking, the panel wrote (in part):
The Complainant is represented by a law firm which claims a particular specialization in intellectual property. The Complainant therefore was, or should have been, familiar with the requirements of the Policy. The Complaint was peppered with citations from the WIPO Overview 3.0 and citations of no less than 24 previous cases, suggesting that the Complainant should have appreciated the importance of policy jurisprudence. Yet the Complainant failed to address the topics concerned with any degree of adequacy…
The Panel concludes that the Complaint was not adequately researched (the core issues being the Complainant’s reliance in a wrong date for the Respondent’s acquisition of the disputed domain name, and a lack of demonstrated reputation in the short span of time between the trademark rights and the registration of the disputed domain name), and that the Respondent should not have been on the receiving end of this administrative proceeding.
There’s another interesting wrinkle in this case. After it received the domain owner’s response, the Complainant sought to withdraw the case citing financial considerations because the Respondent asked for a three-member panel. The panel didn’t buy the reasoning:
While the Complainant cited financial reasons for seeking to withdraw the Complaint, the Panel considers it to be more likely that the Complainant’s representative had reviewed the strength of the Respondent’s case and hoped that it might quietly avoid a finding of RDNH.
If that was the goal, it certainly failed.
Cabinet Bouchara represented the Complainant. No representative is named for the Respondent.
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Author: Andrew Allemann