RDNH on HSIL.com and SHIL.com UDRP

A three member UDRP panel decided the SHIL.com and HSIL.com UDRP was brought in bad faith, and a Reverse Domain Name Hijacking (RDNH) ruling was made. The decision has not yet been published at the World Intellectual Property Organization, but it is case WIPO D2020-3416 and should be made public tomorrow.

The complainants in the UDRP are listed as HSIL Limited, Somany Home Innovation Limited / SHIL Ltd and Brilloca Limited. I was a bit confused about why different companies filed a single UDRP for more than one domain name, but it appears the companies are related to each other.

These two domain names are owned by a company called Get On The Web, which owns many short and valuable acronym domain name. Attorney John Berryhill represented the domain registrant in the UDRP, and he put up a strong case to defend the rights of the registrant and show that the UDRP should not have been brought at all. Not only did the panel rule in favor of the domain registrant, but the panel discussed several reasons for why this UDRP constituted RDNH:

“i) the Complainants, which are represented by counsel, should have appreciated the weakness of its case and the fact that the acronyms “Hsil” and “Shil” encompassed in the disputed domain names could not be exclusively referable to the Complainants, as claimed in the Complaint without any supporting evidence. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, past panels have held that a represented complainant should be held to a higher standard;

ii) the Complainants knew or should have known that the Respondent was not acting in bad faith, especially considering the disputed domain names were registered long before the Complainants acquired trademark rights for the acronym “hsil” and the asserted common law rights for the acronym “shil”;

iii) the Complainants should have carried out a minimal due diligence that would have disclosed the fact that the Complainants would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint;

iv) the Complainants have not provided evidence to substantiate the critical elements of their case. See Bigfoot Ventures LLC v. Shaun Driessen, WIPO Case No. D2016-1330; the Complainants also appear to ignore settled Policy precedents on a number of issues as highlighted in the sections 6.2.B and C above.

v) the Complainants have also provided false information about the inability for any third party to register the acronym “Shil” through the Indian Trademark Office “owing to its well-known status and enormous goodwill” since, as demonstrated by the Respondent (Annex A to the Response), third parties managed to secure trademark registrations for signs identical or similar to SHIL in India. Moreover, the Complainants, through its counsel, attempted to give the impression that the Delhi High Court has upheld the Complainants’ rights in HSIL and SHIL but the supporting documents filed as Annexes P-10 to the Complaint do not pertain to the trademarks HSIL and SHIL but to the Complainants’ trademark HINDWARE. Moreover, a Court order submitted in such Annex does not pertain to a trademark dispute but to a design dispute.”

I also thought the panel’s rebuke of the complaint’s counsel was noteworthy in the discussion about Reverse Domain Name Hijacking:

“In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name. Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties’ and the court’s time. This Panel is limited to a find of abuse, which it readily imposes.”

Ouch.