The registrant of the domain Electrosoft.com was allegedly harassed with $1,000 dollar offers for this 2000 registration.
Eventually, they presented an asking price of $99,000 dollars to the buyer, who called it “exorbitant.” Instead of negotiating the price, they filed a UDRP, losing it; in the process, they were “awarded” a finding of Reverse Domain Name Hijacking.
The domain wasn’t sold for $99,000 dollars but it seems that the next asking price will hit six figures, after Electrosoft Services, Inc. lost the case, which the panel referred to as “Plan B.”
Electrosoft Services, Inc. v. TechOps / SyncPoint
Claim Number: FA2110001969515
PARTIES
Complainant is Electrosoft Services, Inc. (“Complainant”), represented by Kevin J. Thomas and Jason D. Rosenberg (for purposes of the Complainant’s Additional Submission), Virginia, USA. Respondent is TechOps / SyncPoint (“Respondent”), represented by Brett E. Lewis and Michael Cilento of Lewis & Lin, LLC., New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <electrosoft.com>, registered with Dynadot, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 18, 2021; the Forum received payment on October 18, 2021.
On October 20, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <electrosoft.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy).
On October 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@electrosoft.com. Also on October 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 16, 2021.
On November 29, 2021 Complainant submitted an Additional Submission to the Panel, to which Respondent replied on December 6, 2021 with its own Additional Submission.
On November 24, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS
Under the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Although Complainant filed its original Complaint without being represented by legal counsel, it filed an unsolicited additional submission on November 29, 2021, to refute the contention by Respondent in its Response that Complainant has engaged in Reverse Domain Name Hijacking. Respondent, however, argues that the Panel should not accept this additional submission because it believes that the Complainant is “simply abusing the supplemental rule to take a second crack at presenting evidence and arguments that could have been made in the original Complaint.” Respondent’s Additional Submission at p.1.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel does agree that much of the Complainant’s additional submission attempts to include arguments that should have been included in the original Complaint. However, the Panel will accept Complainant’s additional submission solely as it relates to refuting the allegation of Reverse Domain Name Hijacking, but does not accept the portions of the Additional Submission relating to its attempt to introduce new evidence into the record.
With respect to the Respondent’s Additional Submission, the Panel accepts such additional submission only to the extent it argues that the Complainant’s Additional Submission should not be accepted. The Panel, however, does not accept those portions of the Respondent’s Additional Submission pertaining to its response to the new information contained in the Complainant’s Additional Submission (since the Panel did not accept such new information), nor does it need to accept the Respondent’s restatement of its argument that Complainant is engaged in Reverse Domain Name Hijacking.
PARTIES’ CONTENTIONS
A. Complainant
Complainant provides Information Technology and Cybersecurity services to its customers – primarily agencies within the United States Government. Complainant does not have any registered trademarks, but it contends that it has common law rights in the ELECTROSOFT mark by “virtue of its tradenames.” The term “Electrosoft” is included in Complainant’s corporate business name of Electrosoft Services, Inc. which is registered in both the state of Maryland and in the Commonwealth of Virginia. Complainant’s logo includes the term “Electrosoft” and Complainant regularly refers to itself as Electrosoft in proposals submitted to customers. Complainant has been registered in the state of Maryland as “Electrosoft Services, Inc.” since 1997 and in Virginia since 2003. Complainant has a website located at <electrosoft-inc.com>, which it registered and began using in 2001.
Complainant alleges that Respondent’s <electrosoft.com> domain name is identical or confusingly similar to Complainant’s tradename. Respondent is using “Electrosoft” solely to serve a website and a page that openly solicits bids to buy the domain <electrosoft.com> as well as other “Electrosoft” domain names in a variety of country codes.
It alleges that Respondent lacks rights and legitimate interests in the <electrosoft.com> domain name because “[n]either Respondent’s branding, corporate name, business services, trade names, nor products in any way correspond to “Electrosoft.” Complainant alleges that Respondent offered the Disputed Domain name to Complainant for what it believes is an exorbitant amount (USD $99,000).
Complainant believes that the Respondent registered and uses the <electrosoft.com> domain name in bad faith because it “overtly and opening [sic.] using the name “Electrosoft” in this subject domain solely to solicit bids and negotiate exorbitant prices for the purchase of this domain.” Complainant attaches a copy of two “What’sApp” chats as Exhibits. The first chat, according to the Complainant, is dated September 2, 2021, and shows Complainant offering $1,000 for the Electrosoft.com site name. It then displays a response by “Verimark” (presumably a handle used by Respondent) sending a link[i] that purportedly lists a number of entities that have trademarks in the “Electrosoft” mark, followed by $99,000. The second chat, dated September 13, 2021, displays a message stating it is “building this for a client who would like the domain but is not willing to pay over $5,000 for it.”
B. Respondent
Respondent is a company engaged the registration and resale of domain names. Respondent registered <electrosoft.com> in 2000 for its potential use as a corporate moniker. Respondent provides screenshots from Archive.org in 2001 that demonstrate Respondent’s ownership and operation of the Disputed Domain Name at that time.
Respondent argues that Complainant has not established that it has rights in the trademark “Electrosoft.” It has not demonstrated any common law rights in Electrosoft other than the fact that it has been doing business under “Electrosoft Services, Inc.” in Maryland and Virginia. Respondent’s registration of the Disputed Domain Name predates any website used by Complainant and therefore it predates Complainant’s claimed rights in the ELECTROSOFT mark.
Respondent has rights and legitimate interests in and to the Disputed Domain Name. It registered the domain name over 20 years ago and has acquired a number of other domain names similar to the Disputed Domain Name which demonstrates that the term “Electro” has brandable value. Respondent had the right to register this non-exclusive term for its potential as a possible corporate moniker.
Finally, Respondent alleges that Complainant has failed to provide any evidence that Respondent registered or used the domain name in bad faith. Complainant has not offered any evidence that Respondent is seeking to capitalize on the Complainant’s goodwill. Respondent did not know about the Complainant prior to purchasing the Disputed Domain Name. In fact, Complainant did not even register or even use its own domain name until April 2001, well after Respondent registered the Domain Name. Therefore, it would have been impossible for Respondent to have targeted Complainant without ever having heard of it.
Respondent alleges that Complainant has engaged in Reverse Domain Name Hijacking (RDNH) by filing the complainant in bad faith primarily to harass the domain name holder The complaint filed was bare bones and based on the Respondent’s refusal to transfer the domain name to the Complainant prior to initiating this action. Complainant should have known that its case was weak because it had no trademarks in the mark and it is not the exclusive user of the term “Electrosoft”. In addition, it has sat on its rights for over 20 years. Finally, Complainant only filed this action after initiating a discussion to purchase the domain name but was unable to come to an agreement with the Respondent on the price.
C. Additional Submissions
Both Complainant and Respondent submitted additional submissions. As discussed above, the Panel has only accepted the Complainant’s additional submission as it relates to the request by Respondent to find RDNH.
Complainant contends that it did not submit its complaint is bad faith as it has satisfied at least one element of it UDRP Claim. Even if Complainant does not succeed in its UDRP case, it filed the case in good faith. RDNH should only be found in the “worst cases where there is bad faith such as malice or dishonest or some other abuse of process.” Because Complainant established its common law rights and the Disputed Domain Name is confusingly similar to the common law trademark, the Panel should find that Complainant did not file its Complaint in bad faith.
Respondent, in its additional submission, argues that a rule that does not allow the finding of RDNH in a case where the Complainant was successful in establishing only one of the required elements would be inappropriate and would lead to a weakening of the principle of RDNH. To accept that line of argument, Respondent believes, would lead to the filing of more frivolous Complaints without any recourse.
FINDINGS
1. The Disputed Domain Name was registered on Mar. 8, 2000.
2. Complainant has failed in its Complaint to establish that it has common law rights in the term “Electrosoft” that predate the Respondent’s registration of the Disputed Domain Name.
3. The Panel does believe that this is a case that is entitled to a finding of Reverse Domain Name Hijacking.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Under the Policy, Complainant must first establish that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” See Policy at ¶ 4(a)(i). The Policy does not require a Complainant to own a registered trademark if it can demonstrate common law trademark rights prior to the registration of the Disputed Domain Name. See Microsoft Corporation v. Store Remix / Inofficial, FA1734934 (Forum July 10, 2017) (finding that “[t]he Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at Section 1.3. This includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public recognition, and (v) consumer surveys. Id. A complaint should contain specific evidence supporting assertions of acquired distinctiveness and not just conclusory allegations of common law rights. Id.
The formation of a company alone does not qualify has having a trademark or service mark. See Chancery Track, LLC v. Andrew Paul, FA2101001928125 (Forum Jan. 22, 2021) (finding that Complainant failed to provide any evidence that the term “Chancery Track” has become a distinctive identifier which consumers associate with the Complainant or any other evidence that would support a common law right.”). Although some Panels have found the registration of a trade name with a State to provide some evidence of common law rights, most Panels have found that registration of a trade name with a State is insufficient to establish trademark rights. See Navigo Energy Inc. v. Meier, FA 206312 (Forum Dec. 6, 2003) (“The Policy was intended solely to protect registered and unregistered trademarks and not trade names because trade names are not universally protected as are trademarks.”). But see The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark).
In this case, Complainant admits that it does not have a registered trademark, but it alleges that it has been using the term “Electrosoft” in connection with its trade name since 1997. It alleges that its common law rights accrue by virtue of its registered business name in the State of Maryland (since 1997), and in the Commonwealth of Virginia (since 2003). It also uses a logo and branding that includes the company name and the visible word “Electrosoft.” Complainant regularly refers to itself as “Electrosoft” in proposals to its customers and has registered with the United States Federal Government procurement system under the name “Electrosoft Services, Inc.”.
Other than the limited information above, the Complainant does not provide any evidence of (i) the amount of sales under the mark, (ii) the nature and extent of advertising using the mark, (iii) the degree of actual public recognition, or (iv) consumer surveys that are generally the types of evidence provided in by the holders of unregistered common law rights. It simply concludes that because Complainant uses the term “Electrosoft” in its corporate name in a variety of for a, it has common law rights.
Complainant does have a website address, <electrosoft-inc.com>, that does contain a logo using the term “Electrosoft” which could in theory establish common law rights if provided in connection with other evidence of secondary meaning. However, even if this were considered sufficient evidence of common law rights, Complainant has failed to demonstrate that it established those common law rights and acquired distinctiveness (or secondary meaning) prior to the Respondent’s registration of the Disputed Domain Name.
Complainant’s best evidence, its website, was not even registered and/or launched until more than a year after Respondent acquired the <electrosoft.com> domain name. Therefore, assuming arguendo that the website does establish common law rights and secondary meaning, those rights could not have existed prior to the registration of the Disputed Domain Name.
For the reasons above, the Panel finds that Complainant has failed to demonstrate that Respondent has registered a domain name that is identical or confusingly similar to a mark in which Complainant has rights.
Rights or Legitimate Interests / Registration and Use in Bad Faith
Having found that the Complainant failed to demonstrate that the Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights, there is no need to enter findings with respect to whether the Respondent has rights or legitimate interests to the domain name or whether its registration and use were in bad faith.
That said, the Panel does touch on both of these elements in its finding of RDNH below.
Reverse Domain Name Hijacking
The Rules state, “If after considering the submissions of the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in the decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” See Rules at 15(e).
Respondent argues that RDNH should be found in this case based on the following: (i) Complainant knew or clearly should have known at the time it filed the complaint that it could not prove one of the essential elements requirement by the UDRP, (ii) Complainant submitted a bare bones complaint on a domain name that the respondent refused to transfer to the complainant prior to initiating an action, and (iii) Complainant should have known its case was fatally weak, and (iv) it only brought this action after it failed on three separate occasions to purchase the Disputed Domain name from Respondent.
Complainant, who filed the initial complaint presumably without the input of counsel, retained counsel for purposes of submitting an Additional Submission. In refuting RDNH, Complainant’s counsel argues that the complaint was not filed in bad faith and then attempts to introduce new evidence demonstrating that the Complainant does in fact have common law rights in the term “Electrosoft”. It then argues that with the new evidence it has established one of the required elements of its prima facie case, and thus, RDNH cannot be found.
The most instructive case on RDNH is Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, D2013-1603 (WIPO November 3, 2013). This decision listed out the different basis upon which findings of RDNH had been made. They include cases where (i) materially false evidence was submitted, (ii) relevant evidence was omitted, (iii) Complainant misrepresented the facts, (iv) no trademark rights existed at the time of the registration of the domain name, (v) there was an ulterior purpose, namely to increase negotiating leverage in settlement discussions, (vi) Complainant knew that Complaint was doomed to failure, or where (vii) the Complainant had constructive knowledge that its Complaint would not succeed.
The Panel does not take lightly the finding of RDNH, especially in cases where a complaint was filed without the benefit of having counsel. However, after consideration of all of the evidence, the Panel is troubled by the following facts:
a) This action was taken more than 20 years after the domain name was initially acquired by the Respondent.
b) The Complainant provided no evidence to demonstrate that it was plausible that the Respondent knew or should have known about the Complainant’s common law rights at the time it registered the domain name (if indeed it had common law rights). There is no federally registered trademark, no evidence of any business activities within Complainant’s locality, no evidence of any news articles that Complainant could have seen, or any other indicia that Respondent could have even known about the Complainant at the time it registered the domain name other than the fact that it registered its business in Maryland in 1997.
c) The Complainant’s entire argument concerning the Respondent’s lack of rights or legitimate interests, and Respondent’s registration and use of the Disputed Domain Name, is based solely on the fact that the Respondent buys and sells domain names for prices which Complainant believes are too high.
d) The Respondent never initiated contact with the Complainant to sell the domain name to the Complainant. It was the Complainant that initiated contact with the Respondent and it was he who made the first offer to purchase the domain name from the Respondent. The Respondent rejected Complainant’s initial offer, which it had every right to do so. It was only after the Respondent rejected Complainant’s offers and made a counteroffer (which Complainant believed was too high), that it initiated this action.
(a) Impact of Delay
Although Panels have widely recognized that a mere delay between the registration of a domain name and the filing of a complaint does not prevent a Complainant from filing a case, nor from potentially prevailing on the merits, the Panel notes that allowing more than twenty years to lapse prior to asserting rights to the Disputed Domain Name is a factor to consider in Respondent’s favor especially when looking at Respondent’s rights and legitimate interests in the Disputed Domain Name and evaluating whether the Disputed Domain Name was registered and used in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) At Section 4.17. Moreover, it would be inconceivable that Complainant just became aware of the Disputed Domain Name since that domain name (minus the .com) is identical to the mark in which Complainant is alleging rights.
Therefore, although there is no concept of the defense of “laches” in the UDRP context, this type of extensive delay in the enforcement of its rights is a factor that may be considered in favor of the Respondent having rights or legitimate interests in the domain name. The Panel believes it also may be considered in determining whether the Complaint was filed in bad faith.
(b) No evidence of Respondent’s lack of legitimate rights or of Respondent registering and using the Disputed Domain Name in Bad Faith
Although Complainant’s counsel attempts to cure the Complaint’s deficiencies with respect to proving the Complainant’s rights common law rights to the “electrosoft” mark, Complainant’s counsel does not even attempt to cure any of the deficiencies that are glaringly obvious with respect to the second or third elements of the Policy –namely, demonstrating that the Respondent lacks rights or legitimate interests in the Disputed Domain, and that the Disputed Domain Name was both registered and used in bad faith. Even assuming arguendo that the Panel had accepted the new evidence that the Complainant had common law rights in the Disputed Domain name, Complainant’s counsel does not offer any additional evidence that Respondent knew (or even should have known) about Complainant’s rights in the Mark when it registered the Disputed Domain name, or that the Respondent was in some way taking unfair advantage of the Complainant’s goodwill when it registered and used the Disputed Domain Name.
With respect to this case, Complainant began using the tradename “Electrosoft, Inc.” in 1997 in Maryland, and in 2003 in Virginia. Complainant has no federally registered trademarks within the United States and therefore relies on its common law rights, which it has not sufficiently proven. It registered and began using its domain name, <electrosoft-inc.com>, in 2001.
Respondent, whose address is thousands of miles away, registered the domain name <Electrosoft.com>, according to WHOIS records, on March 8, 2000. In addition, at the time the domain name was registered, Complainant was only licensed to do business in Maryland and its primary customers are in the United States Government. Moreover, the Complainant had not established its own web presence by registering and using its own domain name, <electrosoft-inc.com>, until more than a year after the Disputed Domain Name was registered. The Panel agrees with Respondent that is would have been highly improbable, if not impossible, for Respondent to have known about the Complainant’s existence at the time it registered the Disputed Domain Name. This would automatically preclude a finding that the domain name was “registered in bad faith” as required under the Policy.
Nor does the Complainant introduce any evidence that the domain name was being used in bad faith. In addition to the Respondent being unable to know of Complainant’s existence, Complainant does not introduce any evidence that Respondent was somehow targeting Complainant nor seeking to profit from Complainant’s business goodwill. Instead, Complainant makes the argument that the respondent is using the Disputed Domain Name in bad faith because Respondent resells domain names.
There is nothing in the Policy that prohibits the purchase and sale of domain names. It is only a violation of the Policy if a registrant acquires a domain name primarily for the purpose of selling . . . the domain name registration to a Complainant who is the owner of the Trademark or to a competitor of the Complainant, for valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the domain name. See Policy at ¶ 4b(i).
In fact, Panels have found that “a person who legitimately owns a domain name is entitled to sell it for as little or as much as he like or thinks he can get away with.” Robin Food B.V. v. Bogdan Mykhaylets, D2016-0264 (WIPO April 1, 2016). See also Barlow Lyde & Gilbert v. The Business Law Group, D2005-0493 (WIPO June 24, 2005) (“[s]tanding alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice.”)
What is not allowed is knowingly taking advantage of a trademark owner by acquiring that name for the primary purpose of selling that name to the trademark owner. The Panel in Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien, D2019-0455 (WIPO April 16, 2019) (<incanto.com> held that “[s]peculating in intrinsically valuable domain names represents a legitimate business interest in itself, unless the evidence points instead to a disguised intent to exploit another party’s trademark.”)
Complainant offers no evidence that Respondent acquired the domain name primarily to sell it to the Complainant. In fact, the evidence shows that there was no plausible way that Respondent knew or could have known of the existence of the Complainant at the time it registered the domain name, especially given the fact that the Complainant did not establish its presence on the Internet until a year after the domain name was registered.
(c) Plan B
As evidence of Respondent’s bad faith, Complainant submits a screenshot of the Disputed Domain Name’s website that solicits offers for this Disputed Domain Name along with a number of other domain names utilizing the term electrosoft. The Complainant also submits several chat records showing Complainant initiating contact with the Respondent, making several offers for the Disputed Domain Name, ultimately rejected by the Respondent who counteroffers a much higher price.
This is a classic “Plan B” case where complainants that are unable to purchase a domain name through negotiation file UDRP actions in a last-ditch effort to try and acquire the domain name. Complainant initiated the contact with the Respondent and made the first offer. When this was rejected, it made a second offer. Not satisfied with the Respondent’s higher counteroffer, Complainant filed this case. This alone is indeed grounds for a finding of bad faith and abuse of the administrative proceeding by Complainant, especially in light of the lack of any showing that the Respondent was targeting Complainant. See LaFrance Corp v. David Zhang, D2009-0415 (WIPO May 15, 2009) (Respondent argued that this was a Plan B case and justified a finding of RDNH). Ultimately the Panel in LaFrance did not find RDNH but did conclude that the Complaint was brought primarily to harass the domain name holder. See EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC, FA1703001722095 (Forum May 25, 2017) (Panel finds there is sufficient evidence [of using the UDRP as a Plan B to obtain the Domain Name] . . ., and therefore concludes that reverse domain name hijacking has occurred”); See also Cooper’s Hawk Intermediate Holding, LLC v. Tech Admin / Virtual Point Inc., FA2010001916204 (Forum Nov. 17, 2020) (finding RDNH where Complainant only filed the UDRP action after negotiations to purchase the domain name broke down).
(d) Impact of Representation by Counsel
Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH. Those that are not represented by counsel are much less likely to be found to have filed a UDRP in bad faith. In the LaFrance case, cited above, the original complaint was not filed by counsel for the Complainant. The Panel in LaFrance stated that, “[h]ad Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding.” Unlike LaFrance, however, here counsel was retained by Complainant after the Respondent filed its Response, and it was Respondent’s counsel that filed the Complainant’s Additional Submission.
Complainant’s counsel in this matter should have known that even if it could establish the common law rights of the Complainant in its Additional Submission, it could not have established that the Disputed Domain Name was registered and used in bad faith. In fact, Complainant’s counsel did not even try to address these other elements. By not addressing these other elements, the Panel is left to conclude that counsel for the Complainant was trying to cure only the one element it thought it could solely to advance its argument that it is inappropriate to find RDNH where a Complainant has been successful in proving one of the required elements of the UDRP. In this case, counsel for the Complainant should have recognized the deficiencies, requested that its Complaint be withdrawn without prejudice and if, in the unlikely case that the withdrawal was not accepted, make an alternative argument as to why the Panel should not find RDNH.
(c) If Complainant proves one element of its case, is an RDNH finding appropriate?
Complainant’s counsel, believing that it had cured the deficiencies in the Complaint with respect to establishing that the Complainant had common law rights in the ELECTROSOFT mark argues that a finding of RDNH is inappropriate where the complainant has satisfied at least one element of its UDRP Claim. It cites two cases as standing for this proposition: Plan.Net v. Yikilmaz, D2006-0082 (WIPO March 24, 2006) and Gallup, Inc. v. PC s.p.r.l, FA0308000190461 (Forum Dec. 2, 2003).
The panel disagrees that a finding of RDNH is inappropriate and also disagrees with Complainant’s interpretation of the cases it cites. Although it is true that in both cases the Complainant did establish one of the elements of its case, and the Panels in those cases did not find RDNH, the Panels never stated that it was because the Complainant established one of the elements that it did not find RDNH. Rather, in both of those cases, there were other factors that led the Panels to find no RDNH.
The Panel finds that even if the Complainant establishes that one (or even two) of the elements of the Policy have been met, a finding of RDNH may still be appropriate depending on the facts and circumstances of a case. For example, a complainant that owned a trademark registration for a mark that happens to be confusingly similar to a domain name owned by a registrant who also a registered trademark for the same mark (in a different class of services) would have no adverse consequences for making frivolous claims regarding the Respondent’s lack of rights or legitimate interests in the domain name. The Panel notes that adopting the proposed rule by the Complainant would significantly weaken the concept of RDNH.
For all the above reasons, the Panel does find RDNH in this case, and that the Complaint was brought in bad faith constituting an abuse of the administrative proceeding.
Jeffrey J. Neuman, Panelist
Dated: December 9, 2021
[i] The link was described by the Complainant as a link to displaying entities that have trademark rights in and to the Electrosoft mark. The Panel notes that it was unable to click on that link because it was received through a PDF document. The contents of what is found at that link are not disputed by Respondent, so Panel will accept as true what Complainant contends is found when clicking on that link.
