Panels Should Consider RDNH Even if Not Requested

A National Arbitration Forum panel presided over a UDRP that was filed against the CyberGuard.com domain name. CyberGuard.com is owned by McAfee, the global computer security company. For whatever reason, the CyberGuard.com domain name does not resolve to a functioning website.

Not surprisingly, the sole UDRP panelist, Terry F. Peppard, ruled in favor of McAfee even though the company did not respond to the UDRP. While the decision was on point, I think the panelist should have taken it upon himself to rule that the filing was a case of Reverse Domain Name Hijacking (RDNH). It does not appear that RDNH was even considered by the panelist.

In order to win a UDRP proceeding, the complainant needs to prove the domain name was registered and is being used in bad faith. If the complainant cannot prove these two elements that work hand in hand (in addition to the domain name being confusingly similar to its mark and that the registrant doesn’t have rights to the domain name), the UDRP will fail. There should be no wiggle room there.

In the contentions section of the UDRP, the complainant’s own admissions doom the UDRP from succeeding:

“From its beginnings in 2018, Complainant has used the CYBERGUARD mark to market computer programming and computer security consultancy services.”

“Respondent acquired and registered the domain name in its own name in 2008.”

Emphasis above is mine.

From what I can see here, the complainant created its brand in 2018 yet the registrant registered the CyberGuard.com domain name in 2008. This means it is impossible for McAfee to have registered the domain name in bad faith as it relates to the complainant. Because of this impossibility, the complainant should have known the UDRP could not possibly succeed, and the panelist should have ruled it was RDNH.

There is no penalty or alternative outcome for a finding of RDNH, but I still like to see panels consider a RDNH finding when it is impossible for a UDRP to succeed from the outset.