A recent decision that came from WIPO highlights some circumstances where reverse domain name hijacking (RDNH) will most likely be found. The domain name at issue was maisondumonde.com. The important facts for RDNH were primarily pointed out by the Respondent:
According to the Respondent, at the time of registration of the disputed domain name, the Complainant was unknown outside France. Only now is it known in France, Belgium, Italy and Spain where it has opened stores in the last few years. In 1996, the Complainant’s product offer was primarily gifts and accessories, but not furniture. Even today, this continues to be the majority of their product offer in their brick-and-mortar stores, and much of the Complainant’s product range still concentrates on non-furniture products.
The Respondent alleges (but does not provide evidence to show) that the Complainant only offered furniture for sale gradually after 1996 and only started developing its website in 2004. The Complainant’s furniture sales business on the web only started to take off in 2006.
The Respondent states that his product offering has not changed significantly since 2000, when he first started selling furniture in brick-and-mortar stores, and via the Internet, through the disputed domain name which was registered at the same time, together with <maisondumonde.co.uk>.
Further, says the Respondent, when the disputed domain was registered in 2000, the Complainant was a small company in France and had no more claim to use the disputed domain name than anybody else in any country other than France where it had successfully received trade name protection in its home territory.
The Respondent goes on to provide his version of the discussions between the parties that started in 2006. As stated above, the Panel will not summarize those discussions in any further detail because it considers that they are not relevant for the present case.
The Respondent states (and provides evidence to prove) that the authority that rejected his opposition to the Complainant’s CTM application found that “one of the few undisputed points in the proceedings is the fact that the presented evidence is sufficient to prove that the opponent has actually used the name Maison Du Monde in the course of trade”, in particular in the UK, primarily in the London area. (emphasis added)
The Panel found that the Respondent did have some rights or legitimate interests in the domain name, from which it had been operating its business selling furniture since 2000, and also found that there was no evidence of bad faith on the part of the Respondent in registering the domain name.
In the present case, the Complainant knew that the Respondent was offering furniture for sale in 2000 when the Respondent first registered the disputed domain name, and the Complainant did not present any evidence showing that that business was not bona fide back in 2000. Further, the Complainant did not rebut, in its unsolicited rebuttal, the Respondent’s allegation to the effect that his activities were perfectly legitimate back in 2000. After having received the Response, the Complainant should have known that its case was insupportable under the Policy.
While the Panel does take good note of the Complainant’s allegations concerning the situation since 2006, it has no choice but to apply the Rules and to find Reverse Domain Name Hijacking, for the reasons explained above. (emphasis added)
The part that’s a little funky is “After having received the Response…” So, the Panel is creating a duty to withdraw a complaint? Hmm. In any event, they should have been prepared to argue that the Respondent knew about their business prior to starting his business in 2000. Still, I don’t see how they could have overcome the Respondent’s argument that their respective goods/services were not similar at that time (and thus it would not have been a trademark issue back then).
The Panel does wish to note, in addition, that the Response and the Respondent’s unsolicited submission were unnecessarily lengthy because they included certain allegations (not summarized above) and hundreds of pages of exhibits that were not relevant for the present case.
Looks like the Panel wasn’t very pleased with the amount of reading material it was subjected to. There are page limits, but they seem to be routinely ignored. Something to keep in mind: don’t annoy your panel! Although in this case it doesn’t seem to have affected the outcome.
Domain Name: adventurerv.com
Case: CNRV, inc. v. Vertical Axis Inc., No. FA0912001300901 (Nat’l. Arb. Forum May 3, 2010)
Element(s) not met: 4(a)(ii), 4(a)(iii)
Complainant sells RV parts and accessories in the eastern part of Tennessee. Respondent, no stranger to UDRP proceedings, registers domain names and sets up pages with pay-per-click ads related to the subject of the words in the domain name.
Though Complainant had been operating on the web since mid-2004, which is the same year it incorporated, it claimed that its predecessor in interest had been using the ADVENTURERV trademark since 1989.
The three-member Panel denied the complaint. The majority held that Complainant had established common law trademark rights in ADVENTURERV by the time the complaint was filed in 2010. But the Complainant failed to establish the other to required elements of Paragraph 4 of the UDRP.
The Panel found that Complainant did not establish its trademark rights in the 2-year time period between 2004 (when it incorporated) and 2006 (when Respondent registered the Domain Name). At first blush this would seem to contradict the finding that Complainant had established trademark rights in ADVENTURERV. You have to read the opinion closely to see that what the Panel found was that those trademark rights were acquired in the longer period of time from incorporation through the date of the filing of the complaint.
Although the Complainant argued that its predecessor had been using the ADVENTURERV mark since 1989, the Panel did not accept that as true. It found that Complainant had not presented enough evidence to show those rights had passed on to Complainant.
The Panel found that Respondent had not registered the Domain Name in bad faith because the Respondent recognized and acted upon the Domain name’s descriptive characteristics.
Finally, and somewhat surprisingly, the Panel found that Complainant, in bringing the UDRP action, engaged in attempted reverse domain name hijacking. To show reverse domain name hijacking, a respondent must show:
- that the complainant knew of the respondent’s unassailable right or legitimate interest in the domain name;
- the clear lack of bad faith registration and use, with the complainant bringing the action nonetheless;
- that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests; or
- that the complainant knew it had nor rights in the trademark or service mark upon which it relied and nevertheless brought the complaint in bad faith.
The finding of reverse domain name hijacking in this case turned on the descriptive nature of the mark. The Panel found that Complainant knew it could not establish bad faith registration given:
- the weakness of its trademark;
- Respondent’s descriptive use of the domain name; and
- the inherent unlikeliness that Respondent could have had Complainant in mind when it registered the Domain Name, given the narrow geographic scope of Complainant’s use and the many concurrent uses of the same name.
