A National Arbitration forum Panelist, Paul M. DeCicco, has found a Complainant guilty of Reverse Domain Name Hijacking, EVEN THOUGH NO RESPONSE WAS FILED!!
In Horizon Publishing, LLC v. Opulence Communications Ltd, Claim Number: FA1302001487500, Horizon Publishing, LLC, a well-known and well-established publishing company that publishes a monthly print and electronic magazine named “South Florida Opulence,” and uses the mark “OPULENCE” on or in connection with its magazine and advertising goods and services, both the Complainant and its attorney, Marc J. Kesten of Marc J. Kesten, P.L., were found guilty of Reverse Domain Name Hijacking.
The Panelist found that Opulence.com was first registered in 2004.
OPULENCE is a generic dictionary word.
Complainant’s rights in the OPULENCE marks, if any, manifested no earlier than October 13, 2010.
Complainant filed trademark registration applications for the SOUTHERN FLORIDA OPULENCE mark with the State of Florida on or about January 31, 2011.
Complainant filed a trademark registration with the USPTO for the OPULENCE mark on September 25, 2012. As of the date of this decision, a trademark registration has not been issued.
Respondent registered and used the at-issue domain name before Complainant had rights in any of the OPULENCE trademarks.
Even though Respondent failed to Answer the Complaint, the Panelist concluded:
There is no requirement that Rule 15(e) issues be raised on the record for a Panel to hold that a complaint was filed in bad faith. Therefore, and for at least the following reasons, the Panel considers and finds that the instant Complaint was brought in bad faith.
In bringing its Complaint and as discussed above, Complainant overtly disregards facts and law which should have been well known to Complainant prior to filing; namely that the at-issue domain name domain name was registered about six years prior to Complainant having any possible trademark interest in the OPULENCE mark(s),and that it is black letter in all but very specific circumstances a UDRP complaint must fail when the complainant lacks trademark rights at the time the at-issue domain name was first registered.
Since Complainant, through Counsel, knew, or should have known, that its Complaint should, and likely would, fail but nevertheless choose to file the Complaint anyway, the only purpose for doing so must have been in the hope that the reviewing panel would overlook Complainant’s lack of rights at the time the domain name was registered and erroneously rule in Complainant’s favor. Alternatively, Complainant may have filed its losing Complaint to intimidate an unwitting domain name’s owner into making a favorable deal with Complainant, rather than risk an unfavorable decision where he or she would get nothing. Filing a complaint for either of these purposes represents an abuse of the UDRP process.
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