Company never alleged domain was registered in bad faith…just use in bad faith.
Timbermate Products Pty Ltd of Nunawading, Australia, has been found guilty of reverse domain name hijacking by a World Intellectual Property Organization panel.
The company, which uses the domain name timbermate.com.au, filed a UDRP against the domain name timbermate.com.
The owner of Timbermate.com was, at one point, a distributor for Timbermate in the United States. After the distributorship arrangement was over, the domain owner briefly pointed the domain name to a competing product.
Thus, the domain name wasn’t registered in bad faith, but was subsequently used in bad faith. Timbermate never alleged it was registered in bad faith in its complaint. Panelist Tony Willoughby said it was clearly used in bad faith, but not registered in bad faith.
Despite the domain owner not filing a timely response (and thereby not asking for reverse domain name hijacking), Willoughby fulfilled his duty by considering the matter.
And wow, did he consider it. He wrote what was perhaps the longest RDNH decision in UDRP history.
Is the fact that the Panel has found that the Respondent is using the Domain Name in bad faith a relevant factor? Can that fact counter-balance any bad faith intent behind the filing of the Complaint? The Panel does not believe so. Two wrongs do not make a right.
On the findings of the Panel the Complainant has brought a fundamentally misconceived Complaint. It should never have been brought. Paragraph 4(a)(iii) of the Policy calls for bad faith registration and use, yet there is no dispute that the Respondent’s registration of the Domain Name was in good faith…
…The Complainant is a law firm and the Panel finds it difficult to believe that a law firm would intentionally set out to abuse the process in this way. Equally, the Panel finds it astonishing that a law firm could produce such a fundamentally flawed Complaint. Occasionally, such complaints stem from an ignorance of the UDRP case law and the resources available on the Center’s website. In this case, however, the Complainant cites from the case law and relies on a passage (albeit an incomplete passage) from the WIPO Overview (see the reference to Mowitania Wendt & Molitor GbR v. Eric Clermont, supra…
…Accordingly, the Complainant (through its representative) was only too well aware of the conjunctive requirement and instead of citing any previous decisions on the topic under the Policy elected to cite an Irish decision, Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003, a case under the IEDR Policy, which does not incorporate the conjunctive requirement.
The Panel finds that “the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeeding”. The fact that the Domain Name is identical to the Complainant’s trademark and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is making bad faith use of the Domain Name does not alter the fact that under the Policy the Complaint was doomed to failure and the Complainant (through its representative) knew it.
I’m a bit confused by the panelist’s assertion that the complainant is a law firm. When he wrote that, I think he mean it was represented by a law firm.
It’s interesting, too, that some rogue panelists might actually find in Timbermate’s favor here.
Timbermate was represented by K & L Gates LLP.