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.