Company went after domains that were registered in good faith by arguing retroactive bad faith.
A UDRP panel has found Styleline Studios International Limited to have tried reverse hijacking two domain names.
The case shows the limits of using UDRP to settle commercial disputes when a domain is originally registered in good faith.
Styleline filed the dispute against jslidesfootwear .com and jslides .com.
The registrant of the domains created a business and then assigned the trademark to Styleline Studios when he formed a business partnership.
His involvement with the partnership ended, and he retained the domains.
The panel noted that even if it were to find that the domains were being used in bad faith, it would be impossible to show they were originally registered in bad faith, as the UDRP requires.
Styleline Studios tried to get around this by arguing the debunked theory of retroactive bad faith. The panel wasn’t buying it.
Instead, all three of the panelists found reverse domain name hijacking. The majority wrote:
Complainant launched its complaint on several misguided grounds of fact and law. As to facts, it proceeded by claiming ownership of the disputed domain names by virtue of an Intellectual Property Rights Transfer Agreement, but failed to proffer any evidence of such a transfer and Respondents denied the allegation as discussed above. Moreover, Complainant failed to disclose the history between the parties such as the fact that it was incorporated 2 years after the Domain Name was registered and all rights were held by the Respondent to those disputed domain names at the time of registration of J/SLIDES. The circumstances set forth in Para. 4(b)(i-iv) do not support bad faith registration of domain names that predate the trademark except under circumstances that are not present in this case.
Complainant also could not succeed on any of the bad faith grounds by relying on discredited law of Retroactive Bad Faith and that particular branch of the theory that would find renewal of registration a factor of bad faith. Or, that Complainant could overcome these legal shortcomings by arguing that US federal courts would find cybersquatting under the Anticybersquatting Consumer Protection Act.
The UDRP operates under its own terms. It has its own jurisprudence. The introductory definition of RDNH and Rule 15(e) are clear that in launching a complaint that relies on discredited grounds or law and fact, the Complainant opens itself up to sanction for Reverse Domain Name Hijacking, which the Panel accordingly finds.
Panelist Neil Anthony Brown submitted a concurring opinion that included additional reasons for finding RDNH.
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