RDNH Finding in Kosmos.com UDRP

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A company called Kosmos Global Holding, S.L. from Spain filed and lost a UDRP against the Kosmos.com domain name. A three member WIPO panel also found that this was a case of Reverse Domain Name Hijacking. Attorney John Berryhill successfully defended the domain name. This is the second time John defended Kosmos.com, as another company lost its 2015 UDRP filing.

In reading through the UDRP decision that was published today on the WIPO website, it is very clear why the panel found in favor of the registrant and ruled it was RDNH. For one thing, the domain registrant owned the domain name prior to the existence of the complainant. Without the benefit of a time machine, the registrant could not have acquired the domain name in bad faith. Here’s what the panel wrote:

The Panel observes that based on undisputed evidence, the Respondent showed that it registered the Disputed Domain Name before the Complainant’s very existence. Where a respondent registers a domain name before the complainant’s (trade mark) rights accrue, panels will not normally find bad faith on the part of the respondent, except in limited cases of anticipatory bad faith (see section 3.8 of the WIPO Overview 3.0). The Panel finds that no exceptions to the above principle apply in this case. The Respondent could not have registered the Disputed Domain Name in bad faith as the Complainant did simply not exist yet.

Since registration in bad faith is required to succeed in a UDRP, I think the complainant should have realized it had no chance at winning from the get go. That being said, the idea of “anticipatory bad faith” – even though the panel clarified that it is “in limited cases” – is a bit concerning for domain investors.

One area of concern I want to note is related to an email exchange with the complainant initiated by Lumis, a third party domain broker. The panel noted this in the rights or legitimate interests section of the decision:

“However, more relevant to this case is the Complainant’s claim according to which the Respondent is making an unfair use of the Disputed Domain Name with the sole intention to sell it to third parties”

Even though the case was pretty much impossible to win due because the registrant owned the domain name before the complainant existed, the panel fleshed out this exchange in the registration and usage section of the decision:

“The Complainant claims that the Respondent “contacts potential buyers through a supposedly independent broker”. The Complainant suggests that it was contacted by a broker from the company Lumis with regard to the sale of the Disputed Domain Name and attempts to show that this broker is not independent and in fact linked to the Respondent.

However, based on the evidence provided by both parties, the Panel is inclined to believe in the broker’s independence. In the correspondence between the Lumis broker and the Complainant, the broker explicitly states that “we do not own Kosmos.com nor are we representing the owner of this domain” (Complainant Annex 5.1). In the Panel’s view, the Complainant does not show that the Respondent actively contacted the Complainant regarding the Disputed Domain Name.

On the contrary, the evidence suggests that the Complainant took the initiative to contact the Respondent’s authorized broker with an offer to buy the Disputed Domain Name (Complainant’s Annexes 6, 7, and 9 and
Respondent’s Exhibit I).”

As the registrant of many generic domain names, this part scares me. Lumis tries to make it clear that they are independent and not related to the domain registrant or working on behalf of the registrant. For me, a prospective buyer could do a LinkedIn search or a Twitter search and easily see that I am “connected” to various Lumis brokers and its founders. It would not be a big leap for a third party who was contacted by Lumis out of the blue to think they are actually working in coordination with me. Even without social media connections, the domain industry is a bit opaque and someone could be forgiven for making that incorrect assumption. George Kirikos also shared some thoughts about this on Twitter.

It should be noted that Lumis closed a large deal for me several years ago, and I have expressed my concerns with the approach that was referenced in the UDRP decision. One thing I have done on many of my landing pages is add a note to make it clear that there is only one authorized party allowed to discuss the domain name:

“Lilac.com is listed for sale exclusively with Embrace.com. If a broker contacts you about buying Lilac.com, it is unauthorized and without permission.”

In the end, the panel found this was a case of Reverse Domain Name Hijacking. Congratulations to John Berryhill for defending this domain name again.

About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has closed eight figures in deals. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest. Reach out to Elliot: Twitter | Facebook | LinkedIn

16 COMMENTS

  1. This is my main issue with high 5-6 figure value domains. They tend to really attract udrps. Especially since you aren’t just dealing with US trademarks but trademarks in all of these other countries. Thanks for the article!

  2. The rule has to accomodate the fair punishment for UDRP complaints that is ruled as RDNH. It is very common that a company is filing UDRP in bad faith as an attempting to acquire valuable domain name in cheap price through UDRP. The price to file an UDRP is very cheap. Mostly UDRP filed with nonsense background, and it is no fair punishment even it is ruled as RDNH. It is only time and money consuming for the domain owner.

  3. Reverse domain nane hijacking is another term for attempted theft of property rights and a lawsuit can be filed once the UDRP is filed in bad faith.

    • Yeah, but I think that would be:

      1) Costly unless the attorney would work on contingency.
      2) Time consuming and potentially tie up the domain name so it can’t be sold in the interim.
      3) There is no guarantee of success.
      4) Potentially expose domain registrant to a ACPA Lanham Act cybersquatting lawsuit which I believe has different rules than the UDRP and a penalty of up to $100k per domain name if plaintiff wins. In essence, if domain registrant draws the UDRP complainant into litigation by way of defending RDNH lawsuit, the complainant might countersue since they’re already spending money on a legal defense.

      I have no legal expertise, so always consult with a good attorney.

  4. These Lumis scumbags did the same thing to me over a domain I had just acquired. They reached out to a company that had a trademark for the very name I had acquired, although a dictionary word. Lumis doesn’t care if they’re putting your name in harms way, FYI. Just know that it is happening on a MUCH bigger scale than folks realize. Glad they’re being exposed.

  5. There is always risk in defending your rights (especially with the uncertainty of litigation) but a random third party coming along 5 years or more after you acquired rights in a domain name claiming that their rights are senior to your rights should be held accountable for their actions.

    The ACPA is a different analysis but also can result in a monentary award to the domain name owner plus their attorney fees and costs that is well in excess of the value of the domain name. There are also very few lawyers willing to take this type of case on contingency since nothing is ever certain. What is certain is that the complainant in these hikackings will be put on notice that they will be held accountable for their behavior.

    This area and holding non-paying buyers accountable are the two big areas that need more work in the domain name space. Both registrars and domain name brokers should support domain name owners in their right to fight back and hold the hijackers and non-payers accountable..

  6. Lumis has a bad history of frontrunning but that not the case here. What Lumis has done is purely leadgen. The offered an acquisition service to a potential client with full disclose they aren’t representing the Owner or the domain.The fact that some company decided to spin their own conspiracy theory doesn’t make Lumis guilty of anything.

  7. There should be a disincentivizing penalty for RDNH. It is a no-brainer.

    That doesn’t mean “loser pays.” It means “abuser pays” a reasonable penalty designed to acknowledge and discourage abuse.

      • I.e., this:

        That’s a no-brainer too. There is already a judicial system in place, laws on the books and courts for that. Just like for instance when a political party wants to pass all kinds of new problematic laws while refusing to simply enforce the ones that already exist and are designed to remedy and address what they purport to want to remedy and address. The UDRP system was not designed to usurp the court system for that.

        The respondents in a UDRP do not initiate complaints against other parties, the complaint originators do. The onus is on complainants to bring a valid honest and good faith complaint and not abuse the UDRP system and process.

        As is well known to all, with the status quo a complaining party can initiate bogus complaints anytime they want and cause burden and expense to the victims of that, at relatively modest cost. Corrupt or incompetent attorneys are also incentivized to do so on their behalf. It is a lopsided and uneven status quo which anyone can see. It is also bad for society and not just the individual victims of such bogus and baseless complaints.

        Anyone who does not agree that there should be a disincentivizing penalty built into the UDRP system is thinking perversely in my opinion. If someone honestly disagrees with or simply wants to challenge a finding of RDNH, I suppose the courts are designed to handle that as well, but I think everyone can agree it is extremely doubtful there would ever be a valid case for that except perhaps only extremely rarely.

        In general it is understood and recognized by all, including those who support such a world, that society and institutions tend to be lopsided in favor of the rich and powerful at the expense of everyone else. The status quo should not pretend and in this case should stop pretending that is not the case.

  8. 1. This specific business aside, there are all sorts of people who can send emails to anyone, so one takeaway is to have a definite statement about what communications are, or are not, authorized by the domain registrant or an exclusive broker.

    2. Lumis helpfully provided all of the communications, only a portion of which were presented in the complaint. The communications were repeatedly clear that they were acting independently.

    That said, as pointed out above, a prospective complainant who is looking for anything they can use in a UDRP proceeding will certainly try to use communications like this, and will also use social media connections, conference attendance, etc., in order to suggest some sort of relationship between the domain registrant and the third-party domain acquisition proposal.

  9. That’s a no-brainer too. There is already a judicial system in place, laws on the books and courts for that. Just like for instance when a political party wants to pass all kinds of new problematic laws while refusing to simply enforce the ones that already exist and are designed to remedy and address what they purport to want to remedy and address. The UDRP system was not designed to usurp the court system for that.

    The respondents in a UDRP do not initiate complaints against other parties, the complaint originators do. The onus is on complainants to bring a valid honest and good faith complaint and not abuse the UDRP system and process.

    As is well known to all, with the status quo a complaining party can initiate bogus complaints anytime they want and cause burden and expense to the victims of that, at relatively modest cost. Corrupt or incompetent attorneys are also incentivized to do so on their behalf. It is a lopsided and uneven status quo which anyone can see. It is also bad for society and not just the individual victims of such bogus and baseless complaints.

    Anyone who does not agree that there should be a disincentivizing penalty built into the UDRP system is thinking perversely in my opinion. If someone honestly disagrees with or simply wants to challenge a finding of RDNH, I suppose the courts are designed to handle that as well, but I think everyone can agree it is extremely doubtful there would ever be a valid case for that except perhaps only extremely rarely.

    In general it is understood and recognized by all, including those who support such a world, that society and institutions tend to be lopsided in favor of the rich and powerful at the expense of everyone else. The status quo should not pretend and in this case should stop pretending that is not the case.

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