Complainant failed to disclose prior negotiations.
With the help of attorney John Berryhill, Frank Schilling has successfully defended his three letter domain name DKY.com in a UDRP. And, even though Berryhill didn’t ask for a finding of reverse domain name hijacking, the panel rightfully determined the complainant to have filed the case in abuse of the policy.
The complainant was Dumankaya Yapi Malzemeleri San. Ve Tic. A.S of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey. It started using the name DKY around 2012, well after Schilling registered the domain name.
It then tried to buy the domain name through DomainNameSales. The company never mentioned trademark rights when negotiating. When the broker informed the complainant of other offers on the domain name, it responded that it was “happy” to have the domain name owner sell it to someone else for a higher price.
Unable to acquire the domain name at the price it wanted, the complainant filed a UDRP. This is a classic “Plan B” reverse domain name hijacking case.
Conveniently, the complainant also failed to disclose its negotiations in its UDRP filing.
Although Berryhill didn’t ask for a finding of RDNH, the panel noted it had a duty to consider it if warranted. And it was clearly warranted. The panel wrote:
[T]o cap it all the Complainant made no mention whatever of its numerous failed attempts to acquire the Disputed Domain Name through a domain name broker for substantial sums of money. This was a line of email correspondence in which the Complainant ultimately expressed itself “happy” that the Disputed Domain Name should be sold to a third party for a sum in excess of the substantial sums that the Complainant had been offering. In none of that correspondence did the Complainant assert that it had rights to the Disputed Domain Name.
That undisclosed email correspondence, brought to the Panel’s attention by the Respondent, demonstrates that the Complainant’s interest in acquiring the Disputed Domain Name only arose following its acquisition of its registered trade mark rights and that it appreciated that in order to acquire the Disputed Domain Name from the owner it would necessarily have to pay a substantial sum. The Complainant knew that correspondence was fatal to its case and the Panel can only conclude that its failure to disclose it was an attempt to deceive the Panel.
This is one reason you should retain a copy of all correspondence about your domain names. Personally, after I receive a “suspicious” phone call, I also email a copy of the details of the call to myself to keep, just in case.