Although it probably would have still lost the case, the Complainant could have made arguments to prevent a reverse domain name hijacking decision.
A UDRP panelist has found reverse domain name hijacking in a case where the domain owner didn’t respond.
Rymera Web Co Pty Ltd, which sells WooCommerce plugins at WholesaleSuitePlugin.com, filed the dispute against WholesaleSuite.com.
The company has two trademarks that were applied for in November 2021 and claim first use in commerce in May 2015.
According to the UDRP decision, Rymera did not annex a copy of the Whois record to the dispute. However, panelist Alan L. Limbury noted that the domain was registered in June 2016, more than five years before Rymera applied for its trademarks. He wrote:
There is no evidence to support the conclusion that Respondent, based in the United Kingdom, was likely to have been aware in June 2016 of Complainant’s use of either mark before registering the domain name. Complainant’s rights in its registered marks did not accrue until, at the earliest, November 4, 2021. Accordingly, even assuming that Respondent, at the time of the filing of the Complaint, had no rights or legitimate interests in the domain name and that Respondent is presently using the domain name in bad faith, Complainant has not shown that the domain name was registered in bad faith.
Rymera did not provide proof of common law rights or usage pre-dating the domain’s registration in 2016, which was fatal to its case.
Limbury went a step further, deciding this was a case of reverse domain name hijacking:
There is no mention in the Complaint of the date of registration of the domain name, of which Complainant’s Counsel must have been aware since the WHOIS information is mentioned in the Complaint. That date is fatal to the success of the Complaint, since Respondent could not have had Complainant or its marks in mind when registering the domain name. This persuades the Panel that Complainant, represented by Counsel, appreciated that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Based on the record before him, Limbury’s decision makes sense. But I think Rymera’s lawyers at Allen, Dyer, Doppelt and Gilchrist, P.A., made some mistakes.
First, they could have tried to show rights dating back to 2015, before the domain was registered. This would be critical to arguing that the domain was registered in bad faith, and making that effort might have negated the reverse domain name hijacking finding.
Second, it appears HugeDomains registered the domain in 2016, but another party bought it from the company between June and September 2021. That would be the registration date for UDRP. That party created a website with the words “B2B for WooCommerce”. Even though that was before the trademark registrations were filed, it would be easier for the Complainant to argue some pre-registration rights, especially with the site the domain registrant was creating.
Overall, I believe Limbury made the right decision based on how the case was argued. Based on how the case was filed, I’m guessing that the Complainant probably wasn’t aware of the 2021 transfer; otherwise, it should have at least mentioned it. And the company failed to back up any claims of rights pre-dating the domain registration.
Post link: Panelist find reverse domain name hijacking in WholesaleSuite .com dispute
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