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Domain Dispute Don’ts

April 21, 2020, By

Briffa was recently involved in a Uniform Domain-Name Dispute-Resolution Policy (UDRP) which raised some novel points and ultimately resulted in a finding of reverse domain name hijacking (RDNH) against the complainant. That is, despite the complainant requesting the proceedings be terminated.

In Case No. D2019-2738 In Loco Tecnologia da Informação S.A. v. Perfect Privacy, LLC. / Dermot O’Halloran, ZZG Ltd Briffa acted for the respondent, Dermot O’Halloran, ZZG Ltd. The complainant filed the complaint alleging that the respondent’s <inloco.com> domain was: 1) identical or similar to the complainant’s trade mark; 2) the respondent has no rights or legitimate interest in the domain name; and 3) that the respondent had registered and was using the domain name in bad faith. These are the three heads that the complainant had to make a convincing case on to have the domain name transferred over to it. Things did not go to plan for the complainant, but they did for Briffa and the respondent, as you are about to find out.

The issue here was, and as the UDRP panel noted, the respondent registered the domain name back in January 1999, some 15 years before the complainant was even established. The panel found that the domain name was similar to the complainant’s trade mark (this is a very low threshold) but went on to note that due the respondent’s activities with the domain name he had a legitimate right and interest in the domain name. The panel went on to note that the respondent, because he registered the domain name 15 years before the complainant was established, could not have registered the domain name in bad faith or with the complainant in mind.

Things took bit of a turn in the proceedings, in the latter stages, the complainant presumably being aware that it would lose the UDRP sought to withdraw its complaint. The issue with this is that the complainant wanted the proceedings to be dismissed “without prejudice”, which would have meant that the complainant would be free to file another complaint against the respondent in the future. We, along with the respondent, were not at all keen on this.

The respondent took a calculated risk (after being carefully advised by Briffa of course) that it disputed the proceedings should be dismissed “without prejudice” i.e. that the complainant could not bring a further complaint in the future, or not at all. In fact, after more careful advice from Briffa, the respondent went so far as to asking that the panel make a finding of RDNH.

RDNH is defined as the complainant’s filing of the complaint was unreasonable under the circumstances and constitutes an abuse of the administrative proceeding. The panel noted the 15 year gap between the registration of the domain name and the incorporation of the complainant and felt that the “Complainant knew, or ought to have known, its case was doomed to fail.” Accordingly, the case that the complainant wanted to be withdrawn “without prejudice” was actually dismissed “with prejudice” and the panel found the complainant had indeed engaged in RDNH.

Too long? Didn’t read well? The decision’s here and it’s even longer.

To succinctly wrap this up, essentially only bring a UDRP domain name complaint when you are aware that you may have a glimmering chance of success.

At Briffa we are more than happy to give you a preliminary view of your chances of bringing, or defending, a UDRP domain name complaint…for free! You can call us at +44 (0)20 7288 6003 or email at [email protected] and one of our domain name specialists will be in touch.

Written by Samuel O’Toole, Solicitor

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