Steve Levy ⬥ 28 July
Remember how often I’ve said it’s important to hire counsel experienced with the UDRP and all of its nuances? At least one brand owner and one law firm in Denmark haven’t gotten the message.
In the recent case of Dealhunter A/S v. Richard Chiang, WIPO Case No. D2014-0766, the domain name dealhunter.com was registered in 1998, but the complainant only started using his DEALHUNTER trademark in 2007. Also, the complainant registered his own domain name, dealhunter.dk, in November of 2010, over a decade after the respondent acquired the domain at issue in this case. The respondent claimed that he worked to create a daily deal site but was sidetracked by a death in his family.
Addressing the question of bad faith registration, the three-member panel noted that “there is no possibility that the Respondent, when it registered the Domain Name in 1998, could have been aware of the Complainant or rights in the DEALHUNTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.” They also mentioned that “the Respondent’s Website make[s] no reference to the Complainant or its area of business.”
Adding salt to the complainant’s wound, the panel noted that there are many other uses of this rather descriptive phrase and stated that “Complainant is clearly overreaching in its effort to seek exclusive control of the words ‘Deal Hunter.’”
It seems that the complainant had contacted the respondent and sought to purchase his domain but, when the asking price was too high, complainant and his counsel felt that the UDRP could be used for leverage in their negotiations. Rather than roll over, the respondent hired a U.S. law firm well-versed in UDRP defense, and so the prey turned the tables and became the hunter.
Rather than simply defend the case, respondent accused the complainant of reverse domain hijacking – a defense recognized in UDRP Rule 15(e). The panel discussed the history of this defense and noted that “allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.”
Here, the complainant knew that the dealhunter.com domain name was registered nearly nine years before the complainant came into existence and close to 15 years before the complainant acquired any registered rights in the DEALHUNTER trademark. The complainant made two offers to purchase the domain name, and following the rejection of those offers and the registration of the DEALHUNTER mark, chose to bring this complaint.
The panel ultimately held that the complaint “had no reasonable prospects of success” and was thus brought in bad faith.
This finding of reverse domain hijacking, unfortunately, will haunt both the complainant and his counsel since their credibility in any future cases will be tainted with the stain of this over-reaching.
So what’s the lesson here? All together now, class: “Only hire experienced UDRP counsel.”