UDRP panelist lets Complainant off the hook

Panelist doesn’t find RDNH for all the wrong reasons.

Sometimes, I get midway through reading a UDRP decision and think to myself, “The panelist is definitely going to find reverse domain name hijacking.”

Then, the panelist surprises me.

That’s the case with a decision for westshorehomes.com. Forum panelist Bart Van Besien correctly decided in the domain owner’s favor but let the Complainant off the hook for reverse domain name hijacking.

West Shore Home, LLC is a home remodeling company focused on West Shore, an area of the suburbs outside Harrisburg, Pennsylvania. It uses the singular version of the subject domain, westhorehome.com.

The company has trademarks that claim first use dates as early as 2010. In the UDRP it claims continuous use of the trademarks since 2007. The domain was registered in 2005. So, assuming the same person owned it the entire time, this case was dead on arrival.

Indeed, the domain was registered by a real estate agent in the area.

On these details, Van Besien correctly determined that the domain owner has rights or a legitimate interest in the domain name and did not register it in bad faith. And he blasts the Complainant throughout his decision:

Given the timeline of the facts of this case, it is implausible that the Respondent would have registered the disputed domain name to confuse the public or to suggest a relationship with the Complainant.

In light of the above, the arguments of the Complainant in the sense that “it is highly likely that the Respondent is aware of Complainant’s rights in its WEST SHORE family of trademarks” are highly inappropriate.

Second, the Complainant argues that the Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, “with the intent for commercial gain and/or who are otherwise searching for Complainant on the Internet and/or toward the offer of sale of the Domain Name” (sic). The Complainant also states that the sole purpose of the Respondent’s registration of the domain name is to deceptively route Internet users who mistakenly mistype the Complainant’s <westshorehome.com> or are otherwise searching for the Complainant on the Internet to the Respondent’s website and/or to profit from the sale of the disputed domain name

The Complainant did not provide the Panel with any further explanation, argumentation, or evidence in what sense the use of the domain name by the Respondent would be illegitimate, commercial, or unfair. The Panel emphasizes that the selling of a domain name is not per se an unfair use.

Third, the Complainant states that the sole purpose of the Respondent’s registration of the disputed domain name is to deceptively route Internet users who mistakenly type the domain name as a typo of the Complainant’s westshorehome.com domain name in order to confuse the Complainant’s customers and/or to profit from the sale of the domain name. However, as already mentioned above, the registration date of the disputed domain name is more than 10 years before the registration date of the westshorehome.com of which the Complainant claims to be the owner.

Fourth, the Complainant argues that the Respondent cannot have legitimately chosen the disputed domain name because of the Complainant’s established WEST SHORE family of Trademarks. Here, the Panel emphasizes again that the disputed domain name was registered before any use or registration of the Trademarks by the Complainant and before any accrual of trademark rights by the Complainant.

Fifth, the terms “WEST SHORE” indeed refer to the geographical area where both the Respondent and the Complainant are located (i.e., a group of suburbs of Harrisburg, Pennsylvania), and the term “HOMES” refers to services related to houses. The Panel derives from the real estate license of the Respondent, as well as from the earlier emails by the Respondent at the time of the registration of the disputed domain name and thereafter, that the Respondent registered the disputed domain name with the legitimate intention to provide real estate services. In other words, the Panel concludes that the Respondent was using the term “WEST SHORE HOMES” in its dictionary meaning referring to the geographical area in Pennsylvania where the Respondent was located, specifically in relation to real estate services.

Sixth, the fact that the Respondent was not authorized to use the WEST SHORE Trademarks of the Complainant does not automatically imply a lack of rights or legitimate interests. As stated above, there is no evidence that the Complainant had registered or non-registered trademark rights at the time of registration of the domain name.

And yet, when it came time to find reverse domain name hijacking, Van Besien wrote:

Finally, the Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative procedure. Lack of success of a complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Panel refers in particular to the fact that the Complainant prevailed on the first element of Paragraph 4(a) of the Policy and to the fact that the Complainant did probably not know all relevant elements of fact because of the Respondent’s initial use of a privacy service for the WhoIs registration of the domain name.

Oh, please. Let’s discuss both of these reasons for letting the Complainant off the hook.

First, the Complainant prevailed on the first element of the policy. This just means the domain name was similar to a trademark for which the Complainant has rights, regardless of when those rights were obtained. So what? This is easy and ignores the critical parts of the UDRP.

Second, Whois privacy. Would UDRP forums please, please explain to their panelists how Whois privacy works? Just about every domain now has Whois privacy because of GDPR.

Looking at DomainTools historical Whois records, it’s clear that this domain was originally registered without privacy. It was added when GoDaddy started applying privacy to all domains after GDPR.

Here’s the thing: based on my reading of the decision, the Complainant never argued that the domain had changed hands since its 2005 registration. It would need to argue this to have any chance of winning the dispute.

And in the wake of GDPR, UDRP forums have a process in place: the Complainant files the case, then gets the underlying registration data from the registrar, and then needs to amend the case to name the registrant. At this point, it can amend other parts of the case or drop it altogether.

The Complainant can also offer to drop the case after reading the response, too.

This case should have never progressed this far. The panelist let the Complainant off the hook.