Company went after Modway.com domain name, which was registered well before it had trademark rights in the name.
One of three panelists in a UDRP decision for Modway.com has determined that East End N.Y. Imports engaged in reverse domain name hijacking by bringing the case. The other two, while finding in the domain name owner’s favor, declined to find RDNH.
It seems that the complainant’s saving grace for reverse domain name hijacking was that it managed to pull up a couple cases to back up its position that the domain name was renewed in bad faith, even though the circumstances of those cases were different.
Dynamo registered the domain name in 2005. In 2012, the complainant inquired about buying the domain name and tried to negotiate a purchase. It failed.
The complainant then got a trademark for “modway” and its lawyer again inquired about buying the domain name. The attorney then claimed that any renewal by Dynamo after this date would be considered a “renewal in bad faith”. Dynamo renewed the domain name in 2015.
Very few panels have ever agreed that a domain name can be renewed in bad faith under UDRP, and it’s almost always limited to cases in which the domain name owner changed the use of the domain name to deliberately target the trademark holder.
It’s worth noting that one of the panelists, Andrew Christie, has tried to reinterpret the requirement that a domain name be registered in bad faith.
East End N.Y. Imports was represented by Gordon & Jacobson P.C.
Dynamo was asking $25,500 for the domain name, which doesn’t seem ridiculous. The asking price likely went up a lot as a result of this UDRP. For now, the complainant will be stuck with ModwayFurniture.com.