It’s a reverse domain name hijacking case.
Every once in a while, a law firm files a UDRP as a complainant. The results can be disastrous when the firm doesn’t specialize in intellectual property.
So I give some credit to Hale Law, P.A., in Florida. The firm specializes in car accidents, not IP, so the company smartly hired an intellectual property firm, Maxey Fisher, to represent it when it filed a case against GoToHale.com.
But the results were still disastrous.
You see, the domain was registered by a guy named Roger Hale over 20 years ago. The Complainant was formed in 2018, and its principal, Patrick Hale, became licensed to practice law in 2014.
See a problem here?
The Complainant likely didn’t know the domain owner’s identity when it filed its case. But when the registrar confirmed the owner’s identity and WIPO communicated this to the Complainant, the Complainant filed its amended dispute naming Roger Hale.
At this point, the case was clearly dead in the water. And Roger Hale’s attorney John Berryhill took the Complainant to task for this.
The Complainant later tried to withdraw the case with prejudice, but the panel agreed with the Respondent that this wouldn’t be fair. The panel found (pdf) that the dispute was filed in bad faith and constitutes reverse domain name hijacking.
The panel wrote, in part:
…Respondent submitted that this Complaint amounts to a case of reverse domain name hijacking for these reasons and what Respondent correctly claims are speculative, unsubstantiated accusations by Complainant accusing Respondent of intentionally creating confusion, when it was Complainant who registered its identical conflicting mark 20 years after Respondent registered its domain name, totally unaware, of course, of a law firm that would only come into existence decades later. There is no evidence on the record that Respondent set out to intentionally create confusion. With the benefit of apparently experienced intellectual property advisors, Complainant should have been aware that, in these circumstances, its Complaint – at least as Amended – could not succeed. However it proceeded with the claim. While it did seek to withdraw the case, this was not on learning the identity of Respondent – which would have been an understandable moment to seek to withdraw the case – but only once a Response was submitted. This is an abuse of the Policy and the Panel therefore finds this to be a case of reverse domain name hijacking.
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