High Burden For Reverse Hijacking Maintained

For a classic UDRP lesson, we can open our books to the complaint filed over <nuvotv.com> and <nuvotv.net>. This is a lecture on only hiring a counsel who is specifically experienced in domain name enforcement.

The UDRP complain was denied – why?

This UDRP complaint failed because there was no element of bad faith registration.

According to the text of the complaint, “the disputed domain names were registered by the Respondent in July 2008. The Complainant rebranded under the NUVO TV mark in July 2011. There is no evidence in the record suggesting that the Complainant’s intentions were publicly known until the latter half of 2010, and no plausible explanation has been offered as to how the Respondent when registering the disputed domain names in July 2008 could have foreseen this development.”

A counsel with experience in domain name enforcement would not have tried to pursue domain names that were registered before any trademark rights were established. As the decision notes, in this sort of situation, “the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent rights.”

Why wasn’t the complainant guilty of reverse domain hijacking?

The panelist declined to find the complainant guilty of reverse domain hijacking but gave no real explanation for his decision. He just state that “[w]hile the Panel has determined based on the facts and circumstances before it that the Complainant has failed to meet its burden of proof with respect to the third element of the Policy, the Panel is not persuaded from the totality of the record that the Complainant acted in bad faith in invoking the Policy in this case.”

I disagree with this finding and feel that it only gives a free pass to companies and their counsel who fail to understand the UDRP before causing undue stress and the expense of time (and perhaps legal fees) for innocent domain owners.  In my day-to-day work I deal with a lot of disreputable and unethical cybersquatters, but every once in a while I come across someone who has a good justification for their domain, and, in those instances, I advise clients to either negotiate a purchase of the domain or simply back off entirely.

For some reason, in this case, the complainant and its counsel decided to barrel ahead. Perhaps they wanted to use the threat of a filed UDRP complaint as leverage to bring the respondent to the bargaining table. In the end, they didn’t get what they wanted (the domain name), but they did get off easy with the panelist by avoiding the label of a reverse domain hijacker.