Consuela, LLC of Austin Texas, has been found guilty of Reverse Domain Name Hijacking (RDNH) in its attempted grab of the domain name Consuela.com
Consuela, LLC site is: consuelastyle.com
Consuela, LLC was represented by Erik Paul Belt of McCarter English, LLP, of Massachusetts
The domain holder Alberta Hot Rods (“Respondent”), represented by Ari Goldberger of Esqwire.com
As for the case’s fact pretty typical, company registers domain years before trademark holder, then trademark holder uses the newly registered trademark to try to grab the domain.
As we have stated before like a domain name registered years after a trademark usually winds up with a slam dunk win for the trademark holder where trademark holders come after domains registered years before their trademark there should except for exceptional circumstances be a finding of RDNH.
“The Complainant alleges that it sells home décor, clothing, and accessories under the trademark CONSUELA. It first registered its trademark in 2008.
The disputed domain name was registered in 1999.
“The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000)
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
“The Respondent notes that its registration of the disputed domain name far predates Complainant’s claim of rights in the CONSUELA mark, and that the Complainant knew this and acknowledged it in the Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith. A majority of the Panel finds that this alone suffices to establish Reverse Domain Name Hijacking.
“According to the majority of the Panel, not only did the Complainant present its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting an Additional Submission which did not address the key issue raised by the Respondent. The Complainant thus harassed the Respondent by pursing the Complaint after the Complainant knew it to be insupportable.
“A minority of the Panel is of the view that reverse domain name hijacking should not be found without evidence of some knowing effort to seize someone else’s intellectual property. However, the minority accepts the majority’s view.
“Consequently, the Panel finds that the Complaint was submitted in an attempt to the hijack the Respondent’s domain name.
“The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking.