RDNH Finding on TheSun.com UDRP

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Earlier in 2019, News Group Newspapers Limited filed a UDRP against TheSun.com, a seemingly generic (and quite valuable) domain name. A decision on this UDRP was made, and the three member WIPO panel ruled in favor of the domain registrant. In addition, the panel concluded “that the filing of the Complaint by the Complainant constitutes reverse domain name hijacking.

From my reading of the UDRP, it looks like this was filed as a “Plan B” attempt to gain control of the domain name. The complainant apparently tried to buy the domain name and when the negotiation failed to produce a deal, it moved forward with the UDRP filing. Here’s an excerpt from the factual background section of the decision covering the purchase negotiation:

“In 2016, the Complainant made an anonymous approach to purchase the disputed domain name from the Respondent for USD 300,000. The Respondent replied that it was unwilling to accept any offers below USD 700,000. In 2018, the Complainant made a further offer of USD 600,000 which was again rejected by the Respondent. The Respondent stated that it would be open to negotiating terms for the purchase of the disputed domain name starting from USD 2.5 million.”

One of the main reasons the panel ruled in favor of the registrant was because of this substantial offer that was made to acquire the domain name. Here’s an excerpt from the decision in the Rights or Legitimate Interests section:

“Even if the Respondent knew about the Complainant’s trademark rights, the Complainant was anonymously bidding to purchase the disputed domain name for a very high amount (USD 300,000) and doubled the bid when it “came out” and offered USD 600,000 for the disputed domain name. This alone demonstrates the Complainant’s full awareness that the Respondent had a legitimate interest and was not acting in bad faith when it registered and was using the (highly generic) disputed domain name.”

As mentioned above, the panel also felt this UDRP was filed because the purchase negotiation failed. In fact, that appears to be the reason the panel concluded this was a case of RDNH:

“Against the factual background set forth above, it is apparent in the Panel’s view that the Complaint has been filed abusively, in an attempt to wrest the disputed domain name from the Respondent’s control after failed negotiations with the Respondent to acquire the disputed domain name for a reasonable market price.”

The domain registrant was represented by attorney Jason Schaeffer of ESQWire.com.

6 COMMENTS

  1. Please correct me if I’m wrong, but because the name is trademarked, the newspaper brand are effectively the only real buyers. Any other entities would risk a UDRP therefore losing 100s of thousands. Maybe excepting the $600k may have been a wise move.

    • I was going to say something too but decided not to. You’re not wrong. This may be RDNH, but reality check is in order too.

    • I disagree with the bit about this demonstrating the complainant’s full awareness that the Respondent had a legitimate interest…. Sometimes it is better to throw some money at a problem even if being held over a barrel – doesn’t mean that you are happily paying or even agree that the other person has rights.

      “Even if the Respondent knew about the Complainant’s trademark rights, the Complainant was anonymously bidding to purchase the disputed domain name for a very high amount (USD 300,000) and doubled the bid when it “came out” and offered USD 600,000 for the disputed domain name. This alone demonstrates the Complainant’s full awareness that the Respondent had a legitimate interest and was not acting in bad faith when it registered and was using the (highly generic) disputed domain name.”

      In the UK “The Sun” is so big a newspaper that these two words together instantly mean the newspaper and not the thing I’m the sky providing heat and light. That’s how strong a trademark it is.

      Granted, maybe it only has trademark protection in specific areas (print, media, journalism) and it can be argued that the Respondent registered it to praise the gods for providing heat, but $700k to $2.5million – there’s only one customer who would ever pay anywhere near that price – the complainant.

      Good for the seller though. The newspaper really is trash!

      I wonder if they’ll pay 2.5million and if the seller will increase it to 5million?

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