A three member panel not only ruled in favor of Rick Schwartz’s company eRealEstate.com on the UDRP on the domain name SaveMe.com, but the panel found the complainant engaged in abuse of process amounting to Reverse Domain Name Hijacking.
Mr. Schwartz was represented by Howard Neu, Esq.
Here are the relevant facts and findings:
“The Complainants are corporations incorporated in Brazil.”
“Since mid-2010, the Complainant has operated a daily deals website at “www.saveme.com.br”. The site is branded “Save Me”.”
“On October 14, 2010, the Complainant filed an application for a Brazilian trade mark for the stylized words “save me” plus device (No. 903036983). That application is still pending.”
“The Respondent registered the disputed domain name on August 22, 1996.”
“On August 18, 2011, the Complainant’s lawyer emailed the Respondent from his personal email account stating that he would like to buy the disputed domain name for a “start up project” and asking for the “initial price tag”.
“The Complainant responded the next day stating “Well into the 6 figs.”
“On August 26, 2011, the Complainant’s lawyer inquired: “What about 10k?”.
To which the Respondent responded on the same day: “Not even $100k”.
On September 14, 2011, the Complainant’s lawyer emailed to put forward a final offer of US$ 50,000.”
“The Respondent did not reply.”
The panel in rejecting the claim said:
“There is a fatal flaw in the Complainant’s case, namely that the Respondent registered the disputed domain name in 1996, some 14 years before the Complainant started trading in 2010, and could not therefore have registered the disputed domain name in bad faith.”
“Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the disputed domain name has been registered and is being used in bad faith.”
“The Complainant invokes various uses by the Respondent of the website at the disputed domain name since 2010 including for pornography and for pay-per-click links allegedly designed to capitalise on the Complainant’s reputation.”
“However, there is no need for the Panel to address any of these issues because, even if the Complainant establishes that the Respondent later used the disputed domain name in bad faith, and no matter how reprehensible such activities might be (as to which the Panel expresses no view), the Respondent still cannot show that the disputed domain name was registered in bad faith.”
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
“There is no need for the Panel to consider the other issues raised by the Complainant concerning bad faith including the alleged pattern of UDRP bad faith findings against Mr. Schwarz and also the price sought by the Respondent to sell the disputed domain name following the Complainant’s approach.”
“None of this can retrospectively alter the lack of bad faith at the time of registration of the disputed domain name.”
“The Complainant’s remedy, if there is one, arising from its many grievances against the Respondent must lie in the courts.”
On this issue of Reverse Domain Name Hijacking
“Paragraph 15(e) of the Rules provides that “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
“Reverse Domain Name Hijacking (“RDNH”) is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
“The Complainant’s representatives are evidently familiar with the UDRP and both the Complaint and Amended Complaint make extensive reference to previous UDRP decisions.”
“Yet the version of the Complaint originally filed simply ignored the issue of registration in bad faith, labelling the third factor as “Bad Faith In the Domain Name Use”.
“This must have involved deleting the reference to registration in bad faith from WIPO’s complaint template.”
“After the Centre drew attention to this deficiency, the Complainant filed the Amended Complaint which belatedly addressed the issue of bad faith registration and, for the first time.”
“Furthermore, the Complainant even predicted in the Amended Complaint that the Respondent would make an allegation of RDNH and so the Complainant clearly knew that it was skating on very thin ice.”
“The Complainant argued that RDNH cannot arise because the Complainant has merely sought cancellation of the disputed domain name, not transfer.”
“The Panel disagrees.”
“First, complainants should not be allowed to file cases known to be fatally flawed without the possibility of a finding of RDNH against them, by simply fine tuning the remedy sought. ”
“Second, as mentioned above, RDNH is defined as use of the Policy in bad faith “to attempt to deprive” a registrant of a domain name. ”
“If the Panel had ordered cancellation, the disputed domain name would in due course return to the domain pool where it would no doubt be subject to the attentions of the Complainant and others, with only a possibility that the Respondent itself might ultimately re-register it (assuming the Respondent sought to do so). Accordingly, the Complainant’s request for cancellation is no less an attempt to deprive the Respondent of the disputed domain name than a request for transfer would have been.
“For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.”
The Hon Neil Brown Q.C.
Dated: May 31, 2012