Its client lost but the panelist didn’t find reverse domain name hijacking.
A UDRP for Naturals.com that was filed in October has been found in favor of the domain name registrant. The case was filed by an India-based chain of hair salons and training centers.
It will come as no surprise that the Complainant lost the case for this dictionary-word domain name. But the law firm that represented the Complainant might view it as a win, because it wasn’t found guilty of reverse domain name hijacking again.
The law firm DePenning & DePenning represented the beauty chain. It has been on the wrong end of at least three reverse domain name hijacking cases, including one last week.
This case could have gone that way. The domain owner registered the domain in 2001, and it seems that the beauty chain’s presence, at least online, started well after that. It didn’t register Naturals.in until much later.
The Complainant’s arguments seem rather flimsly and misguided:
Complainant further states that the use and existence of Domain Name will cause damage to Complainant’s business and reputation, and to customers and the general public. Any misrepresentation caused on account of the Domain Name would result in confusion and deception in the minds of customers. In this regard, domain names are emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions will soon be carried out only through Internet addresses rather than street addresses, post boxes or faxes. Complainant states that it will not be able to effectively pursue its business plans on the Internet unless the registration of the Domain Name is held by Complainant. Complainant states it is the legitimate owner of the domain names naturals.in and naturals.lk, through which it undertakes business and promotional activities. In view of the Domain Name’s registration, Complainant stands to lose financially and faces the imminent risk of dilution of brand value associated with the mark NATURALS.
Apparently, this concern didn’t develop until just last year.
World Intellectual Property Organization panelist Christopher Gibson gave the Complainant a pass on reverse domain name hijacking:
Panels have found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. In this case, the Panel finds that Complainant satisfied two of the three elements under the Policy. Complainant seems to have been convinced that, while it has trademark rights in its NATURALS mark, Respondent was only using the Domain Name for the purpose of offering it for sale to Complainant at an amount clearly in excess of Respondent’s out-of-pocket costs. The file does not show that Complainant knew or should have clearly known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint and before receiving Respondent’s Response.
I disagree. I think with a bit of due diligence, the Complainant would have known that this case was doomed to fail. The domain was clearly not registered in bad faith.
The law firm DePenning & DePenning and all its lawyers should be banned from filing any new UDRP case for life.
This case should definitely have been their 4th Reverse Domain Name Hijacking.
The UDRP is just not their thing.
It sounds like law firm DePenning & DePenning just wants to bill its clients for more legal fees than to actually counsel them on the fact that they have no hope of winning a UDRP. Nice little business for D&D, huh? Poor(er) clients!
The panelist raised an odd point.
Apparently the respondent has the responsibility to inform the panel of it’s own previous rulings involving this company.
Due diligence not required by panel? Shows how much goes into the decisions.
That panelist should be banned.
There is no excuse for any lawyer to not know prior to filing.
How could it be even remotely possible the respondent intentionally held it for sale to a company that didn’t even exist?
The best part- simply because the complaintant “seemed” convinced
they were the only one respondent could have offered it to, then it must be true!