In a common occurence, company fails to disclose prior corresondence and misleads panel.
Here’s a common pattern in cybersquatting disputes under the UDRP:
A company reaches out to the domain name owner in an effort to either buy the domain or coerce the domain owner into transferring it on the threat of legal action. The domain owner responds and explains why he or she is not cybersquatting, and the complainant lets the matter lie. Then, out of the blue many years later, the complainant files a UDRP and doesn’t mention the prior correspondence between the parties.
Sometimes this is because the people responsible for filing the case weren’t knowledgeable about the prior attempts. Sometimes they were and thought they could slip it by.
In fact, some companies leave out key information or even try to mislead a panel with the hopes that the domain owner won’t respond, so no one will call it on its malfeasance and the domain will be transferred.
That’s what appears to have been the goal in a case Mexican company Proeza, S.A. filed against the French owner of Proeza.com.
An IT admin at Proeza tried to buy the domain in 2011 and the owner, who uses the domain for email, declined to sell. Then an outside lawyer for Proeza threatened the domain owner in 2012. Proeza seemed to drop the issue when the domain owner clearly explained why it wasn’t a case of cybersquatting.
When Proeza filed its case, it didn’t mention any of the prior communication. When the inside counsel for Proeza referred the UDRP matter to another outside counsel, it’s feasible that he didn’t know about the IT admin’s overture, but he clearly knew about the previous threat communications from prior outside counsel. Here’s what the World Intellectual Property Organization panel wrote about this lack of disclosure:
With this information and with a minimal review of the prevailing standards under the Policy as reflected in panel decisions, it should have been obvious to Complainant at that time that a claim under the Policy would be a dubious pursuit. Nonetheless, and apparently without any additional information or evidence five years later, Complainant initiated this proceeding in 2018 with allegations that Respondent had a “clear intention to take an unfair advantage” of a “recognized trademark.” Fortunately for Respondent, he kept the communications from Complainant and its counsel from five years earlier, and could document the exchanges in his Response. If Respondent had not done so, the Panel in this case might have been left with the false impression that the Parties were total strangers at the time of the Complaint’s filing. Accordingly, the Panel finds it misleading that Complainant omitted this information from the Complaint and aggravated the omission by alleging that Respondent had a “clear intent” to target Complainant’s PROEZA mark.
The fact that outside counsel may not have been told about these letters does not excuse Complainant’s failure to disclose them, especially since Respondent’s response to those letters made the point that “proeza” is a dictionary term (see further below) and that Respondent rebutted the assertion of bad faith registration and use. A party should not be able to avoid the consequences of its conduct by shielding its counsel of knowledge about that conduct. This omission lies at the doorstep of in-house counsel, who should have appreciated the significance of these letters or should have asked outside counsel about them; the Panel does not agree with Respondent that outside counsel is responsible to the extent it failed to inquire about the letters (about which it had no knowledge).
Proeza also tried to slip by the panel that proeza is a dictionary word. The panel pointed out that it wouldn’t have known this if the domain owner hadn’t responded to the case:
In any event, if that was the Complainant’s view, it should have explained this clearly in the Complaint. The Panel finds it troubling that a Mexican Complainant could omit the fact that “proeza” is a dictionary word in the Spanish language – Mexico’s official language. Arguably, if Respondent had not filed a response, the dictionary meaning of “proeza” would not have been brought to the Panel’s attention, the Domain Name more likely would have been transferred, and an injustice would have been done. In the UDRP process, there is no discovery and rarely a hearing: panels rely on the candor of the parties in order to reach a just and fair decision. In this case, Complainant was not candid with the Panel. In sum, the Panel finds that Complainant’s misleading statement about the word “proeza” supports a finding of RDNH.