WIPO Panel Finds Reverse Domain Name Hijacking, Without Domain Holder Asking For It

A one member panel just found Pick Enterprises, Inc. of Yarmouth, Maine, guilt of Reverse Domain Name Hijacking (RDNH) on the domain name womantowomanhealthcenter.com

And the best part is the domain holder didn’t even ask for a RDNH finding.

The panel found the Complainant case conduct was poor especially in light of its pre-filing discussion with the domain holder , it made a finding of RDNH on its own initiative.

“This Panel firmly believes a UDRP panel may make this inquiry in an appropriate case even if not so requested by the respondent, and indeed should do so fully to discharge its obligations under the Rules.”

Here are the relevant facts and finding by the panel:

“”Complainant provides health care services to women under the name “Women to Women”. It appears from Complainant’s principal website (though not from the Complaint) that its business involves a wellness program undertaken by its customers, women located throughout the United States, from their homes, using a program devised and tested by Complainant and assisted by personal contact when appropriate. ”

“Complainant holds six trademarks registered on the Principal Register of the United States Patent and Trademark Office (USPTO) that include as their dominant feature WOMEN TO WOMEN: one registered in 1997, one in 2001, one in May 2009, two in February 2010, and one in September 2010. The earliest of these has a first use in commerce of 1984. Complainant operates a clinic in Yarmouth, Maine, United States.”

“Respondent operates a clinic in North Attleboro, Massachusetts, United States, offering certain specified medical services to women.”

“Respondent was founded in 2011 under the name “Woman to Woman Health Center” by two female nurse practitioners who have been duly certified by the Commonwealth of Massachusetts as Women’s Healthcare Nurse Practitioners.”

“In late 2011 Complainant’s counsel sent Respondent a demand letter, asserting Complainant’s “superior rights” in WOMEN TO WOMEN and notifying Respondent that Complainant intended to contact Respondent about its intellectual property.

“Following correspondence between counsel for the parties, Respondent agreed to change its business name to Just Us Women Health Center, which Respondent proceeded to do. ”

“When the Panel accessed the disputed domain name he was automatically redirected to justuswomenhc.com”

“Panels in UDRP proceedings have generally declined to adopt the United States doctrine of constructive notice to the bad faith requirement. Absent other indicia of cybersquatting or special circumstances not present in this case, a complainant must normally show that the domain name registrant was actually aware of the complainant and its mark and selected the domain name to take some advantage of the mark and any good will attached to it.”

“Complainant provides no evidence of any kind that Respondent knew of Complainant or its mark when Respondent registered the disputed domain name in October 2010.”

“The only basis cited in the Complaint besides the legal notion of constructive notice is a reference to Complainant’s demand letter in December 2011, fourteen months after registration of the disputed domain name. ”

“While Complainant (as complainants in these cases are wont to do) duly pleads that its mark is “well-known”, it provides no evidence to back up its conclusionary assertion of Respondent’s actual knowledge. ”

“In fact Complainant’s mark consists of an everyday phrase that has obvious descriptive qualities – a relatively weak mark for purposes of establishing Respondent’s knowledge of it prior to registration of the disputed domain name.”

“There is likewise no evidence, even of facts that if found true by the Panel might allow an inference of bad faith, to support the information-and-belief legal conclusion, quoted above, that Respondent selected the disputed domain name expressly to target Complainant, or otherwise to allow the Panel to infer that Respondents in fact had actual notice. ”

On the issue of Reverse Domain Name Hijacking the panel found;

“To understand the Panel’s discussion of RDNH it is necessary to furnish the pertinent details of the parties’ discussions regarding Respondent’s change of business name. ”

“In mid-March 2012 Respondent’s counsel advised Complainant’s counsel that its client would change its name and that “for a one year period [after the name change] it will link [the disputed domain name] to its new web address, so its patients can access the correct site.” ”

“Complainant’s counsel replied by demanding a transfer of the disputed domain name “within 5 business days.”

“Email discussions continued through late June, with the parties remaining unable to agree on a domain name transfer; according to the record at no time did Respondent agree to transfer the disputed domain name.

“Worthy of note is 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.”

“Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH.

“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.”

“In this case Complainant or its representative has simply ignored three longstanding Policy precedents, two of which are recorded as Consensus Views in the WIPO Overview 2.0 and the other of which in this Panel’s opinion approaches that status.

“The most serious such issue is the requirement that allegations in a complaint must be proven, not merely stated”

“While “Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP” (Id., paragraph 3.4) is not designated a Consensus View it is at the very least a default rule, variation from which requires explication, supported by evidence, from one who pleads it. ”

“The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable.”

“The settlement discussions bear on RDNH for two reasons. First, the attorney who signed the Complaint was the same person who was representing Complainant in the discussions, and so was fully aware of the factual background that preceded the filing of the Complaint. ”

“There is nothing in the Response that Complainant’s representative was not aware of before making his Rules paragraph 3(b)(xiv) certification; there can be no excuse based upon information solely within the control of Respondent.6″

“” Second, given the circumstances of this case, especially the dearth of evidence supporting the Complaint, it is difficult to avoid an inference that the Complaint was filed at least in part not to obtain the disputed domain name but rather to increase negotiating leverage in the settlement discussions, “a highly improper purpose.”

“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.”

Comments

  1. John Berryhill says

    There is nothing in the UDRP about “asking for” an RDNH determination. The relevant UDRP rule assumes that panelists are smart enough to know a frivolous or malicious case when they see one.

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