Domain lawyer Ari Goldberger gets another win, but the panel creates a tough hurdle for reverse domain name hijacking.
Domain lawyer Ari Goldberger successfully defended FullTerm.com in a UDRP dispute at National Arbitration Forum. The case pitted Hologic Inc, maker of a device to determine if a woman is likely to give birth before full term, against domain owner Vertical Axis Inc.
Hologic didn’t apply for a trademark to the term “FullTerm” until 2006, claiming a first use in commerce date of 2004. Vertical Axis registered the domain back in 2001.
It was essentially a slam dunk case, and Goldberger asked the panel to find Hologic guilty of reverse domain name hijacking. When you read the case for reverse domain name hijacking, as written by the panel, you’d think they would find Hologic guilty:
Complainant fails to proffer convincing evidence that supports its claim that the Respondent has no rights or legitimate interest in the at-issue domain name. Complainant likewise fails to present evidence that Respondent acted in bad faith in registering and using the disputed domain name. Moreover, there is no effort made in the Complaint to provide any relevant explanation of bad faith, beyond a conclusory one-sentence assertion that mirrors the language of Policy 4(b)(iv). Under the circumstances, the Complaint is quite deficient in this respect. Complainant knew or should have known that its trademark FULL TERM was registered well after the Respondent registered its domain name corresponding to the generic term FULL TERM. Perhaps Complainant should have also known that it could not prevail without presenting the Panel with at least some explanation tending to support its bare allegation that the Respondent acted in bad faith in registering and using such domain name.
OK, done deal. Right? Wrong. The panel goes on to write:
Nevertheless, while the Complainant’s case is weak and its pleading leaves much to be desired, it does not rise to the level necessary for a finding of Reverse Domain Name Hijacking. There is no sufficient evidence to show that the Complainant brought the Complaint in bad faith. The Complainant, through one of its divisions, did have a trademark registration for a mark that is identical to the disputed domain name. Complainant also presented a prima facie showing that Respondent lacked rights or interest in the domain name. Finally, Complainant supplied a screen print of the commercial website to which the disputed domain name resolves. Therefore, the Panel finds that the Complainant’s conduct in filing its Complaint did not amount to Reverse Domain Name Hijacking.
Wow. I guess if you take a few minutes to file the case and print out a screenshot of a parked page, this panel won’t find you guilty of reverse domain name hijacking.