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Why Should a Complainant Who Has No Actionable Claim Be Excused of Wrongful Conduct in Maintaining a UDRP Proceeding?

A claim of reverse domain name hijacking (RDNH) ultimately rests on complainant untruthfully certifying that “the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Paragraph 3(b)(xiv) of the Rules of the Policy. It is not unlike Rule 11 of the Federal Rules of Procedure in that it requires the complainant to certify that the “assertions in this Complaint are warranted under these Rules and under applicable law as it now exists or as it may be extended by a good-faith and reasonable argument.”

Two UDRP opinions have been filed that focus attention on complainants’ conduct. In both, the sole Panel in one and the concurring minority Panel in the other reprimanded Complainants for abusing the proceedings . In Pick Enterprises, Inc. v. Domains by Proxy, LLC, / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, D2012-1555 (WIPO September 22, 2012) ( the Panel found “[w]orthy of note [both] Complainant’s counsel’s threat to institute a Policy proceeding to recover the disputed domain name and Respondent’s counsel’s succinct (and prescient) reply: ‘Your client [Complainant] won’t prevail on a UDRP claim’.” In the second opinion, S.C. ALTOM CONSULTING S.R.L. v. Domain Administrator, PortMedia and Moniker Privacy Services, D2012-1326 (WIPO September 12, 2012) the minority Panel stated

what … swayed me is that instead of dealing with the evidence, the Complainant chose to attack the Respondent’s bona fides and to allege, before it saw the Response and the Respondent’s version of events, that it was guilty of bad faith and that it was “predatory and parasitical”, apparently because it had registered a domain name that the Complainant, 10 years later, now wanted, but which is for sale at a price it does not want to pay.

A complainant is guilty of RDNH when it initiates a UDRP proceeding with knowledge that respondent has a superior claim to the domain name. Negligent certification without plausible explanation is tantamount to knowledge. Rule 1 defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) authorizes the Panel “to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding … [i]f after considering the submissions the Panel finds that the complaint was brought in bad faith.” For good reason RDNH is more likely to be found where respondent registers its choice prior to the establishment of complainant’s right, although not invariably. The Complainant in Pick Enterprises owns generic phrase, WOMEN TO WOMEN registered with the USPTO prior to the domain name. The Complainant in S.C. ALTOM was a later acquiring trademark owner.

Where the domain name is registered prior to complainant acquiring its right the “improper purpose” is easily discernible. This follows because absent extraordinary powers of foresight – in the words of one Panel, “psychic powers” – respondent could not have “contemplated complainant’s then non-existent trademark.” WIPO Overview at paragraph 3.1. Complainants of earlier acquired trademarks fall afoul of the rule where it is evident from the record that respondents have superior rights to the disputed domain names. This was the case with Pick Enterprises. Respondents are not charged with knowledge of registration; there is no “constructive notice” under the UDRP. WOMEN TO WOMEN is a weak trademark. If a common work or generic phrase is used to position a business in cyberspace the registration is not abusive unless complainant is able to show that respondent is a competitor for the same client base and registered the domain name to take advantage of complainant’s trademark. This was not the case in Pick Enterprises. The Panel believed “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.”

In S.C. ALTOM the Panel held

There was never any prospect of proving any of the three elements in the Policy as the facts clearly do not exist to prove them and the Complainant seemed to acknowledge this by not even attempting to prove them…. It also overlooked the main point about this case which is that the disputed domain name was registered 6 years before the Complainant was incorporated….

Significantly, the Rule does not define bad faith categorically, but gives two examples of what may constitute “bad faith”: either “an attempt at Reverse Domain Name Hijacking” or “brought primarily to harass the domain-name holder.” The two examples necessarily have a familial relationship. Even though they are generally merged into a finding of RDNH each is distinct. The Panel in Pick Enterprises had this to say which I believe the minority Panel in S.C. Altom would subscribe:

The Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves…. (Emphasis added).

“No excuse” for being “unfamiliar with clear Policy precedent” cannot have been put more strongly. Counsel and representatives for the parties are warned. Panels have been less severe with pro se complainants. LaFrance Corp. v. David Zhang, D2009-0415 (WIPO May 15, 2009) (“[h]ad Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding.”).

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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