Verdant Services of Seattle guilty of reverse domain name hijacking.
Well, it’s another day that ends in ‘y’, so I have another reverse domain name hijacking case to report.
This time it’s Verdant Services, Inc. of Seattle trying to reverse domain name hijack Verdant.com. It owns the domain VerdantServices.com.
The domain name is owned by VRDT Corporation, which goes by the name Verdant. VRDT was the company’s ticker symbol when it was previously publicly traded.
The respondent bought the domain name for $80,000 in 2012. As you can see by going to Verdant.com, the domain forwards to VRDT.com, which is a website with details about the respondent’s company.
Here’s one of the curious arguments made by the complainant:
Complainant tried to buy the Domain Name from Respondent in 2017, without success. Because Complainant sought to acquire the Domain Name, Respondent knew that Complainant existed and had an interest in the trademark corresponding to the Domain Name.
Hello, Plan B reverse domain name hijacking!
Here’s part of what World Intellectual Property Organization panelist David H. Bernstein wrote in finding Verdant Services, Inc. guilty of reverse domain name hijacking:
On its face, this Complaint did not state a claim for transfer under the Policy. Complainant’s evidence established that Respondent had made a bona fide use of the Domain Name in the past, that Respondent’s acquisition of the Domain Name in 2012 therefore could not possibly have been in bad faith, and that Respondent was not in fact defunct (since Respondent responded to Complainant’s emails as recently as November 2017). The Complaint was also legally deficient to the extent it was essentially arguing for retroactive bad faith, a concept that has firmly been rejected as set out in the WIPO Overview 3.0. Alternatively, if Complainant did not intend to argue for retroactive bad faith (since that part of the Complaint is somewhat unclear in its reasoning), then the Complaint was devoid of any allegations whatsoever establishing bad faith registration. And, the Complaint included no facts that establish bad faith use.
The weakness of the Complaint was all the more apparent once Respondent responded, with evidence not only of its good faith registration and its legitimate interest in the VERDANT mark, but also with evidence of its business interests that continue to operate under the name. These are facts that should have been readily apparent to Complainant, had Complainant investigated Respondent’s use prior to filing the Complaint. In light of the Complainant’s knowledge of Respondent’s prior bona fide use of the Domain Name and the other facts discussed above, it was improper for Complainant to file a challenge and claim that Respondent was defunct without adequate investigation of the true facts.
The complainant was represented by Carstens & Cahoon, LLP, an intellectual property law firm.
Nat Cohen says
Yes, a horrible complaint that should never have been brought. As clear a case of RDNH as one could ever expect to see. Surprising that Panelist David Bernstein didn’t mention “Plan B” in his RDNH discussion, as the Complainant only brought the dispute after attempting to purchase the domain from the domain owner.
The Complainant makes a misguided “Retroactive Bad Faith” argument. That panelists, such as Bernstein, once championed the “Retroactive Bad Faith” (RBF) argument has encouraged companies to launch a never-ending stream of abusive complaints, such as this one.
The ICA argued forcefully against the gross distortion of the UDRP that the RBF theory produced in articles including-
We’re gratified that WIPO removed RBF as an acceptable interpretation of the Policy, and that now even Bernstein recognizes that “UDRP panels have definitively rejected the concept of “retroactive” bad faith registration”.
The sad thing is that the complainant was represented by an “intellectual property law firm” who should have known they had no case. Ten minutes of online research would have been enough to see there was no case. You have to assume they just decided to give it a shot because there was nothing to lose.