In a new National Arbitration forum Decision in Consuela, LLC v. Alberta Hot Rods a strong RDNH finding was made by the Panel Here is what they said:
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).
The Respondent notes that its registration of the disputed domain name far predates Complainant’s claim of rights in the CONSUELA mark, and that the Complainant knew this and acknowleged it in the Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith. A majority of the Panel finds that this alone suffices to establish Reverse Domain Name Hijacking. See Futuris Auto. Interiors (Australia) Pty Ltd v. X9 Interactive LLC, D2011-0596 (WIPO June 20, 2011) (“On the contrary, the Complainant’s own researches as described in the Complaint clearly demonstrate that the Respondent (or its corporate predecessor) began to use the disputed domain name in the context of a business using the term “Futuris” within a short period after registration of the disputed domain name and furthermore that this use continued over a period of many years. […] Accordingly, it is clear to a majority of the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith.
The majority of the Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”); see also Pick Enters., Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Ctr. f/k/a Woman to Woman Health Ctr., D2012-1555 (WIPO Sept. 22, 2012) (“Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes ‘the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.’ These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes.”)
According to the majority of the Panel, not only did the Complainant present its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting an Additional Submission which did not address the key issue raised by the Respondent. The Complainant thus harassed the Respondent by pursing the Complaint after the Complainant knew it to be insupportable.
A minority of the Panel is of the view that reverse domain name hijacking should not be found without evidence of some knowing effort to seize someone else’s intellectual property. However, the minority accepts the majority’s view.
Consequently, the Panel finds that the Complaint was submitted in an attempt to the hijack the Respondent’s domain name.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the
The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking.
This is a well-thought -out decision and should be the model for future decisions under like circumstances.
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