The Novelist.com UDRP was decided and published on the National Arbitration Forum (NAF) website. The decision went in favor of the owner of the domain name, WebMagic. The panel also concluded that this was a case of Reverse Domain Name Hijacking (RDNH). Domain attorney John Berryhill represented the domain owner in this UDRP.
The complainant in this UDRP turned out to be EBSCO Industries, Inc., which operates a website called NoveList. Because the UDRP was filed at the NAF, the complainant was not publicly revealed until the decision was published.
With any UDRP proceeding, the complainant needs to prove three things (paraphrased): the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. Although the panel concluded the complainant proved the first aspect, the panel concluded that the domain owner has rights and legitimate interests in the domain name. Here’s how the panel ruled on that aspect:
“The Panel accepts that Respondent can establish rights or legitimate interests in the Domain Name on the basis that a respondent may have a legitimate interest in a domain name. That is, if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word. Respondent asserts that it uses the Domain Name with its online shopping by listing hyperlinks to constantly selected novel items, hence a play on the words “novel” and “list.” In the Panel’s view this argument is plausible and is sufficient to shift any burden of proof. Accordingly, the Panel concludes that Respondent has shown that, in the present circumstances, it has sufficient rights or legitimate interests in the Domain Name.”
In the section about registering and using the domain name in bad faith, the panel also decided in favor of the domain owner, stating:
“Respondent similarly contends that it could not have had any knowledge of Complainant’s Mark because it simply didn’t exist at the relevant time. In the Panel’s view the fact that the Domain Name is identical is irrelevant – the fact is that the Domain Name was registered 20 years ago and 10 years before Complainant’s Mark came into existence. That, in and of itself, is sufficient to deny any possible suggestion of bad faith on Respondent’s part.”
As mentioned earlier, this panel concluded that this was a case of Reverse Domain Name Hijacking. The respondent mentioned that this UDRP was a “Plan B” attempt at getting possession of the domain name, since previous attempts at buying the domain name failed. The panel decided that this was a case of RDNH:
“The Panel infers that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith.”
There are no penalties for Reverse Domain Name Hijacking, but the domain owner could use this decision as a deterrent in future UDRP threats.
