Bigfoot Ventures LLC of New York, New York, represented by Morton & Associates LLP has just been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name slized.com
The one member panel of Matthew S. Harris decided a pretty interesting and rare type of RDNH case especially where he found the version of event stated by the domain holder were “highly implausible”
However the panel found “the Complaint in this case was totally inadequate..The Complainant was also professionally represented and as such should have been aware of the requirements of the Policy.”
Ouch for the Complainant’s lawyers
For the Trademark holder the panel “reached the unfortunate conclusion that the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been “extensive advertising and commercial use across the global marketplace” of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.
The decision also contains a very a good discussion on Reverse Domain Name Hijacking in general.
Here are the highlights:
The Complaint had a Benelux trademark for the word mark SLIZED filed on October 10, 2006
The Domain Name was registered by the Respondent on January 28, 2016.
It has since its registration been used to display a parking page generated by the Registrar.
The key issue in this case is the extent of the Respondent’s knowledge and his intentions when he registered the Domain Name on January 28, 2016.
So far as the Respondent is concerned, the version of events he gives is highly implausible. The Respondent would have the Panel believe that (a) he was aware of the use of the Domain Name back in 2007, (b) in January 2016 he decided he wanted to register a different domain name for a new business; i.e.
Nevertheless, this does not absolve the Complainant of the requirement to demonstrate on the balance of probabilities that the Domain Name was registered in order to take unfair advantage of the trade mark rights of the Complainant.
It is this part of the Complainant that is totally lacking.
In particular, there are assertions as to use of and goodwill in a Benelux trademark but these assertions are neither properly explained nor evidenced.
No attempt has been made to explain the exact way in which the Complainant’s mark has been used and the extent of that use, whether that be in terms of the territories in which it has been used and the magnitude of the economic activity in those territories under that mark.
Instead there are simply bare assertions that it has been used in “global commerce” in respect of each of the classes of goods in respect of which the Benelux mark has been registered and that there has been “extensive advertising and commercial use across the global marketplace”. That is wholly inadequate.
However, this is not just a case where a complainant has failed to file an adequate complainant.
First, the Complainant’s contentions are of themselves commercially implausible. Why would a business based in New York that had (if the Complainant is to be believed) since 2007 continuously used the term “Slized” as a mark in “global commerce”, only seek to register that mark as a trade mark in the Benelux states? Second, the Respondent has brought forward evidence, by reference to websites and social media pages controlled by the Complainant or associated companies, which suggests that this mark has not been used by the Complainant at all.
In the circumstances, the Panel has reached the conclusion that the Respondent’s claims that the trade mark has not been used (at least to any significant degree) are correct. Given this and even though the Panel has disregarded the Respondent’s own claims as to why the Domain Name was registered, it accepts that the Respondent was unaware of the Complainant’s mark when the Domain Name was registered. Consequentially, the Panel is not convinced that the Domain Name could have been registered in order to take unfair advantage of the trade mark rights of the Complainant.
It follows from this that the Complainant has failed to show that the Domain Name was registered by the Respondent in bad faith.
Reverse Domain Name Hijacking
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: 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; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint.”
As has already been described in this decision, the Complaint in this case was totally inadequate. It seems likely that the Complainant is not unfamiliar with the UDRP.
In this respect, the Panel notes that a company with the name “Bigfoot Ventures Ltd” was the unsuccessful respondent in Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana v Bigfoot Ventures LLC,NAF Claim No. 1195961.
In any event, the Complainant was also professionally represented1 and as such should have been aware of the requirements of the Policy.
Further, the Panel has also reached the unfortunate conclusion that the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been “extensive advertising and commercial use across the global marketplace” of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.
In the circumstances, the Panel has reached the conclusion that the Complaint was speculatively filed with no real belief that the Complainant could satisfy the requirements of the Policy. The Panel has also expressed scepticism as to the Respondent’s contentions in this case. However, this does not excuse the Complainant’s conduct. The Panel, therefore, finds that there has been Reverse Domain Name Hijacking in this case.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris