It would avoid a lot of reverse domain name hijacking findings.
There are two common things I see in UDRP filings that trip up Complainants and often end in findings of reverse domain name hijacking (RDNH).
- The Complainant files a UDRP against a domain name that was registered by the Respondent before the Complainant existed or had trademark rights.
- The Complainant refers to a case involving Octogen Pharmacal Company, Inc, or other cases that argue “retroactive bad faith.”
The latest example is Kevac S.r.l’s filing for the domain name Kevac.com. At best, it had weak arguments for a common law trademark that pre-dated the domain registration. It also referred to the retroactive bad faith cases. While some panelists agreed with retroactive bad faith a long, long time ago, the argument has been widely panned since then.
Kevac lost the UDRP and was found to have engaged in reverse domain name hijacking.
Reverse domain name hijacking is bad for the Complainant. It wastes time, money, and legal resources and the company is labeled a reverse domain name hijacker. It’s also bad for the domain name owner, who must pay to defend the case.
Many RDNH cases could be avoided if the UDRP form added two questions to the submission.
- Does your trademark pre-date the Respondent’s registration of the domain name, or is there a good reason the domain name owner would have known of your brand prior to registering the domain name?
- Do you cite the Octogen case?
If the answer to the first question is no or the second one is yes, the UDRP provider could explain that the case is probably weak and might result in a reverse domain name hijacking finding.
This would have caused Kevac to think twice before filing its dispute, even if it had already been warned by the domain owner’s attorney.
In the instant case, Kevac was represented by LS LexJus Sinacta and the domain owner was represented by Muscovitch Law P.C.