This might be the best RDNH finding I’ve ever read

Only one panelist finds RDNH, but he writes a scathing critique.

Impossible BV, a company that makes film for old-school Polaroid cameras, has lost a UDRP it filed against the domain name ImpossibleProject.com.

Impossible BV uses the domain name Impossible-Project.com, but before filing the UDRP it used the even longer domain the-impossible-project.com.

Joel Runyon of Impossible X LLC bought ImpossibleProject.com a couple years ago, adding to his collection of about 250 domains with impossible in them.

Impossible BV tried to buy the domain name from Runyon. It filed the UDRP after failing to buy the domain name.

A three-person WIPO panel denied the claim, saying that the complainant failed to show that Runyon and his company lacked rights or legitimate interests in the domain name.

The majority of the panel did not find reverse domain name hijacking. This is despite Impossible BV conveniently leaving out and redacting communications that seem to show admission that the respondent had legitimate interests in the domain name.

Panelist Tony Willoughby believes this case a flagrant example of reverse domain name hijacking. He wrote a dissenting opinion blasting his fellow panelists and the complainant. I think it’s worth republishing in full. I’ve also emphasized a few points in bold.

While this dissent is solely on the question of RDNH, I also disassociate myself from the Panel majority’s comments opening up the possibility that there might be something in Complainant’s conspiracy theories, which were wholly unsupported by any evidence. Had there been anything to them, the Panel could not, in my view, have made the finding that it has under the second element.

The Complaint failed because Complainant failed to satisfy the Panel that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The failure stemmed in large part because Respondent was able to establish that he had a US trademark Registration for IMPOSSIBLE (stylised), which appeared to have been registered before he became aware of Complainant’s cause for complaint and which was consistent with the substantial evidence he produced showing his past use of his so-called “Impossible-formative” names.

I contend that as a matter of principle if a complainant is going to allege that a respondent has no rights or legitimate interests in respect of a domain name, he ought if he can to make some very basic investigation to verify whether or not the respondent does in fact have any such rights. In practice this can be very difficult if one knows nothing of the respondent; and it may well be that in many (if not most) cases, the complainant has nowhere to start.

However, in this case Complainant was corresponding with Respondent from October 2015 to January 2016 seeking to purchase the Disputed Domain Name from Respondent. In the course of that correspondence Complainant (through its CEO) acknowledged Respondent’s interest in “Impossible-formative” names. Moreover, it was told in an email of October 27, 2015 that Respondent had a registered trademark covering its usage. From that month, if not before, Complainant was also well aware that it was dealing with Joel Runyon of “Impossible Ventures” and that Respondent and his business used the names “ImpossibleHQ” and impossiblehq.com, for these names appeared at the base of each of Respondent’s emails.

There was thus quite a lot of basic information upon which Complainant could have based a simple investigation, but the Complaint mentions nothing. It does not even mention Respondent’s claim to a registered trademark. The email in question was excluded from the selection annexed to the Complaint.

I’m afraid that I simply cannot believe that a trademark search would not have been carried out to check Respondent’s claim. And one can only speculate as to why all reference to that trademark was omitted from the Complaint.

Other emails that were excluded from Complainant’s annexures were emails from Respondent identifying its interest in “Impossible” names and an email in which Complainant both expressly acknowledges Respondent’s interest in those names (“I just figured that you actually care about the impossible portfolio of domains.”) and expressly recognises that “you can ask what you want for the domain and I understand that”, which is a statement which flatly contradicts the whole tenor of the Complaint.

For me, the tone of the pre-Complaint inter partes correspondence when read in full (thanks to Respondent) is not correspondence with a cybersquatter, but correspondence with a genuine user of “Impossibleformative” names.

I am shocked at the level of selection and do not understand how the Complaint’s certificate as to the completeness of the evidence could have been signed.

I am conscious that the Panel majority do not regard the issue of RDNH as being of any great relevance in the context of this dispute. I fundamentally disagree.

In my view, this was a case that should never have been launched and it is crucial that complainants and their advisers have it made very clear to them that in a system such as this where many respondents do not bother to respond, it is important that panels can rely upon the certificate at the end of the Complaint.

Finally, if, as some panelists believe, failure on the part of respondents to conduct trademark searches prior to registering domain names may be evidence of bad faith registration and use, one might reasonably enquire why it is not equally abusive for a complainant to assert that the respondent has no relevant rights, when a simple trademark search in the respondent’s jurisdiction would have confirmed to the complainant that the respondent might well have such rights. In this case, what makes matters much worse is that, as I have pointed out above, the Complainant was expressly informed months prior to the filing of the Complaint that the Respondent was the owner of registered trademark rights and a simple search of the United States Patent and Trademark Office would have verified it.

I would make a finding of RDNH.

The complainant was represented by Wilson, Elser, Moskowitz, Edelman & Dicker, LLP and the respondent was represented by Wiley Rein LLP.

ImpossibleProject.com