Crime and Punishment
January 21, 2014
While the UDRP is a great tool for brandowners seeking to reclaim a domain name that infringes upon their trademark, it is not completely free from abuse itself. Time and again I have seen inexperienced complainants and their lawyers get tripped up by the basic requirement that a trademark must already exist before the domain was acquired by the respondent in order to find bad faith registration. Such flawed cases are routinely denied by panels and, even worse, complainants are slapped with a charge of reverse domain name hijacking (RDNH).
Quality Logo Products, Inc., the Complainant in a recent UDRP case filed with WIPO over the domain name qlp.com, narrowly escaped such a fate. The panel in this case ultimately decided that the domain name in question should stay with the Respondent, Get On The Web, Ltd., while a concurring opinion from a panelist shows that the Complainant really should have been charged with RDNH.
There were two main issues. First of all, while the Complainant did hold a trademark for a service mark that contains the letters “QLP” in a design, it did not hold a trademark for the term “QLP” itself. Secondly, the domain name was registered six years before the Complainant began using the QLP trademark. These facts are what lead the panel to deny the complaint.
Panelist Richard G. Lyon took this decision a step further. In a concurring decision tacked on at the end of the panel’s Discussion and Findings, he states that he believes that the Complainant is guilty of RDNH because it “knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP” and that “the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights.”
He ends by reminding us of the reasons why RDNH can be such a problem, stating that “the filing of this groundless Complaint has put the Respondent to considerable time and expense, including payment of the necessary fee for a three-member panel. We owe it to this Respondent to chastise the Complainant and its representative for their irresponsible conduct. We owe it to the integrity of the UDRP process to call out patent abuses such as I believe this case to be.”