Panelist wimps out on finding that complaint was RDNH.
Arthur Yarlett / Graphic-FX filed a UDRP against Michael McGloin / Visual Voice over the domain name VisualVoice.com. McGloin registered the domain name in 1995. Yarlett filed for a trademark on Visual Voice in 2013 and it was registered in 2014. The application cited a first use in 2011.
In other words, this case is dead on arrival because the domain name was clearly not registered in bad faith.
Panelist Antonina Pakharenko-Anderson, a managing partner at an intellectual property law firm, found that Yarlett did not show a lack of rights in the domain name, nor did he show bad faith registration. Yet she declined to find reverse domain name hijacking, ostensibly because the complainant just didn’t know any better.
She wrote:
…WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.17, and cases cited therein).
Another common feature of previous panel decisions is that there is a tendency to identify the bad faith requirement with the degree of the Complainant’s knowledge of its capability of meeting its burden of proof with regard to the mandatory elements of paragraph 4 of the Policy. For example, in carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, the Panel states that “a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the policy”.However, it is important not to overemphasize the Complainant’s failure to prove the Complaint, to the detriment of the demonstration of bad faith that is the essence of paragraph 15(e). A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).
In light of the aforesaid, and taking into account that the Complainant satisfied paragraphs 4(a)(i) of the Policy, the Panel judges that the present Complaint does not constitute a case of reverse domain name hijacking…
Complaints that could not possibly state an actionable claim (later acquired trademarks, earlier registered domain names) are by definition abusing the Policy. That Complainants have standing is not just a weak case but is sufficient for RDNH under the UDRP as it would be for damages and attorneys feess under the Anticybersquatting Consumer Protection Act.
Haven’t we seen the name of panelist Antonina Pakharenko-Anderson before?
Domain Owner sues National Arbitration Forum and complainant after losing UDRP
https://domainnamewire.com/2015/12/07/naf-lawsuit/
Whatever happened to that?
NAF got out in June:
06/06/2016 37 ORDER Granting Defendant’s Motion to Dismiss 30 by Judge Cormac J. Carney: For the foregoing reasons, NAFs motion is GRANTED. Virtualpoints claims against NAF are barred and are therefore DISMISSED WITH PREJUDICE. See document for further information. (lwag) (Entered: 06/06/2016)
The remaining case (after some claims were struck) is scheduled as follows:
08/11/2016 53 SCHEDULING ORDER by Judge Cormac J. Carney. Discovery cut-off 5/18/2017. Motions due by 7/17/2017. Last date to conduct settlement conference is 6/13/2017. Pretrial Conference set for 8/14/2017 at 3:00 p.m. Jury Trial set for 8/22/2017 at 8:30 a.m. (mku) (Entered: 08/11/2016)