RDNH Finding in DSPA.com UDRP

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A UDRP was filed against the 4 letter DSPA.com domain name at the World Intellectual Property Organization (WIPO), and the decision was published today. The case was decided in favor of the domain registrant, a domain investor who owns a valuable portfolio of domain names. The 3 member WIPO panel ruled this was a case of Reverse Domain Name Hijacking (RDNH). Attorney John Berryhill represented the domain registrant in the proceeding.

The complainant in the dispute was a company called DSPA B.V., which uses the DSPA.nl ccTLD domain name for its business. According to the decision, the complainant had owned the domain name several years ago, and the registrant acquired it in an expiry auction. Coincidentally, I was one of the four underbidders in this 2017 auction on NameJet.

In this decision, the panel once again acknowledged that domain investors have a legitimate right to register short acronym domain names as investments:

“UDRP panels have accepted that aggregating and holding domain names consisting of acronyms, letter strings, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy (see section 2.10 of the WIPO Overview 3.0).

There are a number of considerations to take into account when looking at whether the Respondent has rights or legitimate interests in a domain name consisting of a dictionary term, letter string, or acronym. As a starting point, the Complainant should be able to (a) prove general association of the mark with the Complainant and (b) prove either targeting or intention at the time of registration to sell the domain to the Complainant or a competitor. Both (a) and (b) require proof that the Respondent knew or should have known of the Complainant and its mark.

There is no such proof in this Complaint, and similarly no proof of any fact that might support an inference of such knowledge. The Complainant offers no information at all of sales or of any reason why someone in the United States should know about the Complainant or its marks. The Complainant has not offered any evidence that the Disputed Domain Name has been used by the Respondent to target the Complainant or to compete with the Complainant’s fire extinguisher and suppression business. There is no evidence to suggest that the Respondent was aware of the Complainant, or was likely to be aware of the Complainant, when the Respondent acquired the Disputed Domain Name two years after it was last used and owned by the Complainant. (There is not even an allegation that the Respondent had any hand in the Complainant’s failure to renew the Disputed Domain Name in 2015.)”

Further, the panel noted that the registrant was a bonafide purchaser in the auction, and that this acronym domain name is not solely unique to the complainant:

“In this case, the Respondent has purchased the Disputed Domain Name from auction as a bona fide purchaser. There is no evidence that the Respondent acquired the Disputed Domain Name because of the Complainant. Based on the evidence before the Panel, the Complainant has not demonstrated a particular reputation in the Disputed Domain Name or that the four-letter string DSPA is uniquely associated with the Complainant. In fact the Respondent has, with dictionary evidence, demonstrated the contrary.”

The panel also noted the fact that investing in acronym domain names should be okay barring infringement on a trademark. My interpretation is that owning a domain name like DSPA.com is alright as long as the registrant is not using it in a way that infringes on a company’s marks – like having associated PPC links or possibly advertising a competing service or company:

“The Respondent has a portfolio of “four-letter” domain names. It appears that the Respondent is in the business of investing in and reselling four-letter domain names. A number of previous UDRP panels have found that as long as this kind of business is not infringing on a complainant’s rights in a mark, the Policy allows registration and use of domain names for this purpose.”

The panel seemed to believe this was a clear cut case of RDNH:

“The Panel is prepared to make a finding of Reverse Domain Name Hijacking (“RDNH”) without even considering the Respondent’s argument or the evidence of false statements. The Panel finds that the Complaint is deficient, and that the Complainant has provided no evidence that the Respondent should have known of the Complainant. Further, the Complainant has ignored prior decisions under the Policy that clearly demonstrate the hopelessness of the Complainant’s position.”

The three panelists who presided over this UDRP were John Swinson, Warwick A. Rothnie, and Richard G. Lyon.

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