In October, I wrote about the UDRP filed against the Hims.com domain name. The UDRP was decided by a three member panel, and the domain registrant will be able to keep the domain name after the complaint was denied.
The primary reason the complaint was denied was because proving the domain name was registered in bad faith, which is necessary to prevail in a UDRP, was impossible. I mentioned that in the article I wrote about the UDRP filing, and the panel ruled in favor of the domain registrant because of that. Here’s the relevant discussion in the decision:
“Respondent contends that its renewal of the registration does not establish bad faith. When a respondent registers a domain name prior to a complainant establishing rights in a mark, Panels have overwhelmingly found that the respondent did not register a domain name in bad faith. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Arena Football League v. Armand F. Lange & Assocs., FA 128791 (Forum Dec. 26, 2002) (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration.”). The Panel finds that Respondent’s registration of the domain name predates Complainant’s claimed rights in the HIMS mark by more than twenty years, and that its use of the domain name was legitimate both before and after renewal. Specifically, the Panel notes that Respondent is entitled to use the disputed domain name as he sees fit, regardless of the timing of discussions regarding Complainant’s desire to purchase the disputed domain name. “
Not surprisingly, the domain registrant asked the panel to consider a finding of Reverse Domain Name Hijacking (RDNH). It looks like the registrant asked for this because of the impossibility of registering the domain name in bad faith so many years prior to the complainant’s existence. The panel declined to rule it was RDNH because of the possibility of a (now discredited) finding that the domain name was renewed in bad faith. Here’s the discussion about RDNH:
“Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent of its rights to the disputed domain name, and force the transfer of the domain name to Complainant because Respondent refused to sell. Respondent also claims that Complainant is not candid in its Complaint because it does not acknowledge the descriptive meaning of HIMS, its relevance to Respondent’s field of business, or Respondent’s prior uses of the disputed domain name. Complainant also does not provide an account of its many attempts to purchase the disputed domain name from Respondent. The Panel finds that, although these allegations may be true, Complainant had a colorable claim based on arguments of bad faith renewal of the disputed domain name, and therefore declines to find reverse hijacking. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).”
Based on the RDNH discussion, in my opinion, UDRP providers need to do a better job of informing people that renewal in bad faith is no longer considered a valid argument. Based on this RDNH decision, it seems like almost every panel could rule against RDNH for this reason. In my opinion, it is the responsibility of the complainant to understand the rules of the UDRP. Either the Retroactive Bad Faith argument is not clearly discredited on the UDRP providers’ websites or compainants are responsible for knowing a domain owner can not renew a domain name in bad faith.