Panelist Found RDNH Despite No Response from Registrant

While looking through my WIPO Domain Name Decisions email this morning, I saw something I do not recall seeing in a UDRP decision before. An Italian company called Advice Group S.P.A. filed a UDRP against the seemingly generic AdviceGroup.com. The domain registrant, who I believe is a domain investor, did not respond to the UDRP filing.

Typically, filings like this one are usually decided in favor of the complainant. More often than not, these are obvious cases of cybersquatting. Spending money to hire a lawyer or spending time responding to a UDRP probably does not make sense for the registrant. As a result, these are one-sided arguments that are most often won by the complainant.

In the case of AdviceGroup.com, not only did the panelist, W. Scott Blackmer, rule in favor of the domain registrant, but he also decided this was a case of Reverse Domain Name Hijacking (RDNH). I do not recall seeing a scenario like this before. Kudos to Mr. Blackmer for taking the time to consider RDNH without being asked, and for making this finding. Here’s what he wrote:

“Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Thus, even in the absence of a Response requesting such a declaration, it is appropriate for the Panel to consider it.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).

The Amended Complaint inappropriately relies on accusations of “cybersquatting” by the “Respondent”, citing proceedings that did not involve Mr. Dinoia and failing to show how the Respondent targeted the Complainant’s mark when the Registrar indicates that the Respondent acquired the Domain Name some two years before the Complainant obtained a trademark, and nine months before the Complainant even filed its trademark application. The Domain Name is a common English two-word term, and the Complainant offered absolutely no evidence to indicate that the Respondent had advance knowledge of the Complainant’s trademark plans and no reason to believe the Domain Name would ultimately be more valuable in relation to the Complainant, once those plans came to fruition, than for its generic sense. Given the plain language of the Policy, paragraph 4(b), and the resources available to counsel such as the WIPO Overview 3.0, it is inexcusable to ignore the obvious deficiency in evidence and reasoning in the Amended Complaint, once the Registrar disclosed details about the identity of the registrant and the timing of its acquisition of the Domain Name.

The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.”

When reviewing UDRP decisions involving valuable acronym or generic .com domain names, I am sometimes bothered when the panel does not consider (well, discuss) a possible finding of RDNH. There is no penalty against the complainant for the filing, but it puts others on notice that an entity abused the UDRP system so future panels may be aware. I applaud Mr. Blackmer for taking additional time to consider a finding of RDNH in this UDRP.