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.
another domainer says
I am sure East End will file another udrp within the next 24 months hoping they get a positive outcome.
C.S. Watch says
If this decision doesn’t merit RDNH, then there is no RDNH. The decision quotes Complainant’s email telling Respondent that they want a cheaper price, and if they don’t get it, they’ll file a UDRP. That is a lock. Failing to find RDNH here is indefensible.
Reading your link, Andrew Christie had the biggest responsibility to act here. The retroactive bad faith line he had bumbled with in the past has been rejected and openly ridiculed in US courts, and it is the excuse Complainants make for these abusive filings.
Gibson and Christie based their refusal of RDNH on ‘tough’ emails between parties. Did anyone see that the price was the same in the years before the Complainant built the mark as it was after they built a trademark and a business? That is some Gandhi action. Would you be upset if they then tried to use the UDRP to steal the name? Mos def. And as the dissent points out, snippiness is not relevant or probative.
The decision says they required the Respondent to cut down to 5000 words. But the findings discuss ‘retroactive bad faith,’ Paragraph 2, and proof of RDNH. That’s all outside the very plain language of the three-prong test upon which the 5000 word limit is based.
What are the other cases about the Complainant that were deemed ‘irrelevant?’ A search shows they’ve been sued several times for trademark infringement…and even textbook cybersquatting. Is that irrelevant to an RDNH finding–whether or not they know exactly what constitutes cybersquatting?
Even Harvard Law Review has ranted about the embarrassing ‘retroactive bad faith’ reasoning. This line has cost Respondents thousands in legal fees. And for Complainants, it is now always a stroll right off an expensive cliff. So why fail to find RDNH to help stop the bleeding? Whom does it benefit…besides paid arbitrators.
It’s nobler to own oneself in the wrong, only one must be rich enough to do so.