Panel said it would have ordered the Complainant to pay legal costs if it were an option.
A National Arbitration Forum panel has found JoshCo Group, LLC d/b/a Veteran Benefits Guide, guilty of reverse domain name hijacking.
The Complainant tried to obtain the valuable domain vbg.com through a cybersquatting claim. The case failed for many reasons.
One was that the domain owner registered the domain nearly two decades before the Complainant argued that it had rights in the unregistered mark VBG.
The other was that it didn’t show it had any common law rights in the mark at all. In fact, it confusingly argued rights in many different marks. The panel noted that the Complainant:
asserted a conflicting and confusing series of alleged trademarks which must have been confusing to the Respondent and was certainly confusing to the Panel. Those alleged trademarks were misspelt several times, showing an apparent indifference to their accuracy.
While the Complainant’s website takes great pains to call out VBG as an initialism, much of that emphasis was added very recently just before filing the UDRP.
The Complainant also tried to argue retroactive bad faith. That argument went over like a lead balloon.
The panel gave a lot of reasons for finding reverse domain name hijacking:
(a) the proceeding was brought and pursued when there was no reasonable prospect of it succeeding, as it was always clear that the Complainant could not prove any of the 3 elements that it was required to prove;
(b) this must have been apparent to the Complainant’s advisers;
(c) to proceed with such a complaint is harassment and in bad faith;
(d) the Respondent was entitled to know precisely the trademark that the Complainant relied on, yet it asserted a conflicting and confusing series of alleged trademarks which must have been confusing to the Respondent and was certainly confusing to the Panel. Those alleged trademarks were misspelt several times, showing an apparent indifference to their accuracy. Nor is this a de minimis issue, as the Respondent was entitled to know, in a jurisdiction where the delineation of the trademark is pivotal, exactly what was being alleged against it;
(e) on several occasions the Complainant accused the Respondent of bad faith, a serious allegation for which there was never any evidence;
(f) in defending what was essentially a baseless case, the Respondent must have been put to considerable time, trouble and cost in a jurisdiction where there is no provision for legal costs to be awarded to a successful respondent, which the Panel would have ordered, had it had power to do so;
(g) the Complainant’s advisers furnished on two occasions, in the Complaint and the Amended Complaint, certificates that the material it was submitting was “complete and accurate”, when the initial proposal by the Complainant to buy the domain name was not disclosed and hence the Complaint and the Amended Complaint were neither complete nor accurate.
The panel said that it would have ordered the Complainant to pay the domain owner’s legal costs if that were an option. UDRP panels don’t have the power to enforce monetary sanctions.
Timothy Getzoff of Holland & Hart LLP represented the Complainant and John Berryhill represented the domain owner.