Inbay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keystone Law, United Kingdom has been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name inbay.com which was registered back on December 11, 1998.
The trademark which inBay Limited of London based their claim on wasn’t filed until 2012.
Here are the RDNH findings by the three member panel of Nicholas Smith Nick J. Gardner, and Diane Cabell:
This is a Complaint which should never have been launched.
The Complainant knew that the Domain Name was registered before the Complainant came into existence and several years before it acquired any rights in the INBAY Mark.
The Complainant made (through two of its employees who did not disclose they were acting on behalf of the Complainant) two approaches to the Respondent seeking to purchase the Domain Name, and did not disclose this fact in its Complaint. Following the rejection of those offers and the registration of the INBAY Mark, the Complainant chose to bring this Complaint. It did so without any prior notice in terms of formal communication to the Respondent. Whilst there is no obligation upon the Complainant to have sent such communication had it done so it would likely have been better appraised of the relevant facts and gained a better understanding of the weaknesses of its case.
The Complainant, in its original Complaint, identified that the Domain Name had been registered in December 1998.
The Complaint also acknowledged that the Complainant itself did not come into existence until 2008, and its registered trademarks were not applied for until 2012.
It also acknowledged that its predecessors in title had carried on business since 2002. It was accordingly quite clear there was a disparity in dates given that the original registration of the Domain Name predated by many years any relevant rights of either the Complainant or its predecessors. Instead of addressing this disparity, the Complaint simply asserted that the actions of the Respondent in offering the Domain Name for sale, somehow amounted to the Respondent registering and using the Domain Name in bad faith. Given the nature of the Policy and previously decided UDRP cases on this issue, this was an argument that had no reasonable prospects of success.
It was apparently only when the Complainant saw the Response that it realised that the Respondent had in fact registered the Domain Name later than it had previously alleged, i.e. in 2007. As the Respondent notes this is something the Complainant could have found out easily had it made some simple investigations before filing the Complaint.
In any event having reviewed the Response, the Complainant then belatedly sought to develop more forcefully the arguments that the Respondent’s registration of the Domain Name was in bad faith by reason of the Complainant’s predecessors activity prior to 2007.
As indicated above the Panel is unpersuaded by this submission.
In any event, even if the Complainant’s recast case does establish that its predecessors in title had acquired common law rights in the name “inbay” by 2007, that case still fails to explain why any such rights should have been known to the Respondent (beyond asserting incorrectly that he was under a duty to search for such rights and/or he had constructive notice of such rights).
Even more significantly the Complainant fails to explain why any such rights extend beyond the United Kingdom. Accordingly it was wholly unclear why it was said that the Respondent, even if he had identified the activities of the Complainant’s predecessors in title, should not have registered the Domain Name.
This was a case that, on the facts as known by the Complainant at the time it commenced this proceeding, and even after it had received the Response, had no prospect of success and should never have been brought.
The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.