Wednesday , August 17 2022

Former IPC member tries reverse domain name hijacking

A former member of ICANN’s Intellectual Property Committee represented a company in a UDRP. It didn’t go so well.

Picture of a gold skull and crossbones with the words "reverse domain name hijacking"

A World Intellectual Property (WIPO) panel has found (pdf) Pacific House, LLC to have engaged in reverse domain name hijacking over the domain libertas.org in a doozy of a case.

While little is known about the Complainant, it appears to be creating an organization to espouse libertarian values. Libertas is Latin for liberty.

Libertas Institute, a non-profit libertarian organization in Utah, acquired the domain name earlier this year. The Respondent was founded in 2011 and has associated trademarks.

By all accounts, the Respondent’s organization pre-dated the Complainant’s. In fact, when the Complainant initially applied for trademarks, the U.S. Patent and Trademark Office denied them, citing the Respondent’s mark.

The Respondent acquired the domain name earlier this year. It clearly has rights or legitimate interests in the domain name and uses it for its website.

Here’s where things extend beyond a run-of-the-mill reverse domain name hijacking decision.

The Complainant was represented by Don Moody of The IP & Technology Legal Group, P.C. Moody is a former member of the ICANN Intellectual Property Constituency (IPC).

The law firm acquired libertas.org in 2019 on behalf of the Complainant. But it let it expire later that year. The domain was sold via GoDaddy’s expired domain auctions, and another company picked it up. Libertas Group is at least the second owner of the domain since it expired.

WIPO’s three-person panel (which includes a current IPC member) provided a detailed explanation of the fallacies in the complaint:

Here, the Complainant misstated or obscured relevant facts in its possession.  The Complainant said that it owned the Domain Name from June 2019 until it “inadvertently lapsed when the registration expired” due to “technical issues” “coupled with staffing limitations stemming from the COVID-19 global pandemic.”  The Complainant’s counsel, in demand correspondence prior to filing the Complaint in this proceeding, stretched the facts even further, claiming that the Complainant held the Domain Name for “over a year” and that the registration “lapsed in mid-late 2020”, partly because of the pandemic.  In fact, the Complainant itself did not register the Domain Name and never used it.  The Complainant’s law firm registered the Domain Name in June 2019, and the registration expired six months later in December 2019, before the COVID epidemic imposed “staffing limitations”.  The Respondent did not acquire the Domain Name until more than a year later, after the Domain Name had been held by other parties.  In filing the UDRP Complaint, the Complainant was well aware of these facts and that this was quite a different case from “opportunistic re-registration” of a lapsed domain name that had been used by a trademark holder for its website, as in the decisions cited in the Complaint.

The Complainant was also well aware of the Respondent and its own senior trademark rights in a corresponding name.  The USPTO examining attorney cited the Respondent’s LIBERTAS INSTITUTE trademark in refusing the Complainant’s applications for trademark registration, until the Complainant precisely excluded the Respondent’s activities from the services in its own trademark application to avoid confusion.  It is remarkable that the Complainant would simply sidestep this obvious ground for the Respondent’s claim of rights or legitimate interests.  The Complainant sought to discredit the Respondent’s defense of being “commonly known” by a name corresponding to the Domain Name by giving the Respondent’s name, incorrectly, as “Libertas Institute of Utah”.  Otherwise, the Complaint largely overlooks the second UDRP element and the Respondent’s own claims to rights or legitimate interests in the Domain Name.  The Complainant urges the Panel to give precedence instead to restoring a lost domain name to its “former owner” at all costs, which is not the purpose of the Policy.

Both parties have legitimate interests in the Domain Name.  One of the risks of a failure to renew a domain name registration, through whatever series of errors, is that another party with a legitimate interest will subsequently register the domain name and use it in good faith.  The record here does not indicate that the Respondent sought to exploit the Complainant’s junior mark, and the Respondent is certainly not responsible for correcting the Complainant’s errors in maintaining the registration of the Domain Name.

The Complainant, in brief, was in possession of sufficient facts to recognize that it was unlikely to prevail on the second and third elements of the Complaint, given the plain language of the Policy and existing precedent.  The Complainant strained or misstated facts, cited inapposite decisions, and failed to confront the obvious claims of a senior trademark rights holder.

In its supplemental filing, the Complainant argues that the Panel nevertheless cannot find RDNH so long as the Complainant prevails on a single element of the Complaint, such as the first element, its standing to bring the complaint because it holds European trademark registrations.  Rule 15(e) does not compel such a conclusion.  A complainant must establish all three elements of the complaint, and if the complainant does not furnish credible support for one or two of those elements, the complaint is doomed and should not have been filed, imposing costs and other burdens on the respondent.  This suffices for an RDNH finding, as reflected in other WIPO decisions that emphasize the defects of a complaint with respect to one or two but not all three elements of the complaint.  See WIPO Overview 3.0, section 4.16;  see also, e.g., Proto Software, Inc. v. Vertical Axis, Inc / PROTO.COM, WIPO Case No. D2006-0905.

Taken together, the Complainant’s factual inaccuracies and strained reading of the Policy and Policy decisions reflect the Complainant’s bad faith in resorting to the UDRP to recover a Domain Name lost through its own errors.  The Panel finds that the Complaint represents an instance of attempted Reverse Domain Name Hijacking.

John Berryhill represented the domain name owner.

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