ESQwire law firm lands the #domain name DAE.com back in the hands of its registrant

Dubai Aerospace Enterprise uses the DAE acronym, and went after the premium three letter domain DAE.com via the UDRP process.

Registered in 1995, this aged acronym was offered for sale after the Complainant participated in a GoDaddy auction where the Respondent won it at for $126,000 dollars. Meanwhile, the GoDaddy brokering service had placed a valuation on this domain between$20,000 and $50,000 dollars.

Note: The Respondent was represented by ESQwire.com, premium sponsors of DomainGang.

Past the auction’s ending, the Respondent sought up to $500,000 dollars for the domain, when the Complainant reached out to them. That price range triggered the Complainant’s reaction, and they filed a UDRP at the WIPO.

The three member panel’s decision was to deny transfer of the domain to the Complainant. One panelist argued that a finding of Reverse Domain Name Hijacking is justified, but he was in the minority.

Full details about the UDRP decision for DAE.com follow:

Dubai Aerospace Enterprise (DAE) Ltd. v. Registration Private, Domains By Proxy, LLC / Deven Patel
Case No. D2020-0041

1. The Parties

The Complainant is Dubai Aerospace Enterprise (DAE) Ltd., United Arab Emirates, represented by Clifford Chance, LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Deven Patel, United States, represented by ESQwire.com P.C., United States.

2. The Domain Name and Registrar

The disputed domain name <dae.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 27, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response after a request of extension was February 23, 2020. The Response was filed with the Center on February 21, 2020.

The Center appointed Assen Alexiev, Flip Jan Claude Petillion and The Hon Neil Brown Q.C. as panelists in this matter on March 31, 2020. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 16, 2020, the Complainant filed an unsolicited supplemental submission, and on March 31, 2020, the Respondent filed a reply to it. The Panel will exercise its discretion to admit the supplemental filings of the Parties, noting that its consideration was not pivotal to the Panel’s decision.

4. Factual Background

The Complainant is an aerospace business established in 2006. It is focused on aircraft engineering and financing. Its aircraft leasing division, DAE Capital, is one of the largest aircraft leasing businesses in the world. The Complainant’s group has offices in seven cities on four continents and holds a fleet of about 400 aircraft with a value of over USD 14 billion, serving over 110 airlines. The KPMG report “The Aviation Industry Leaders Report 2019” (the “KPMG Report”) ranks the Complainant at number 8 of the top 30 global aircraft leasing companies.

The Complainant contends that it has unregistered trademark rights in the acronym “DAE” (the “DAE trademark”) for services in the aerospace business.

The Complainant has registered and uses for its business the domain names <daecapital.com>, registered on February 12, 2006, and <dae.aero>, registered on October 9, 2017.

The disputed domain name was registered by a third party on October 16, 1995. The Respondent acquired it in a public tender, organized by the Registrar on November 18, 2019. The disputed domain name now resolves to a parking webpage of the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has unregistered trademark rights in the DAE trademark, which it has extensively used as a core part of its internal and external branding, as result of which the trademark has become instantly recognizable to buyers in the aircraft engineering and financing sectors.

According to the Complainant, the disputed domain name is identical or confusingly similar to the DAE trademark, as it incorporates this trademark in its entirety.

The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent acquired the disputed domain name at auction on November 18, 2019 for a price of USD 126,000. According to the Complainant, this price is very high in the context of such an auction, as in an October 22, 2019 email prior to the auction, the GoDaddy Broker Service had advised the Complainant to expect a price of the disputed domain name between USD 20,000 and USD 50,000. The Complainant points out that the price paid by the Respondent was one of the highest prices paid in 2019 for three letter domain names, with the majority of them selling in or below the range of USD 20,000 – 50,000. The Complainant submits that in an email dated January 8, 2020, the Respondent claimed that he had intended to launch a start-up business for which to use the disputed domain name. According to the Complainant, the purchase of a domain name without inherent meaning for USD 126,000 would be a surprising use of start-up capital. The Complainant further submits that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. Since the acquisition of the disputed domain name by the Respondent, it has resolved to a parked webpage containing pay-per-click ads, and within two weeks of the acquisition of the disputed domain name, the Respondent attempted to sell it to the Complainant via GoDaddy Broker Services.

The Complainant contends that the disputed domain name was acquired and used by the Respondent in bad faith, primarily for the purpose of selling it to the Complainant as owner of the DAE trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainant explains that the disputed domain name was originally registered in 1995 and belonged to a third party. As the Complainant had been unable to acquire the disputed domain name from its previous registrant, it placed a backorder in an effort to acquire the disputed domain name if it were allowed to expire. On October 21, 2019, the Registrar initiated an expired domain auction process, and the Complainant registered with GoDaddy Broker Services with a view to purchasing the disputed domain name at auction. The following day, GoDaddy Broker Service indicated the likely price range in the auction would be USD 20,000 – 50,000. The Complainant participated in the auction, where the Respondent placed a winning bid of USD 126,000. On December 3, 2019, email messages from GoDaddy Broker Services gave the Complainant cause to suspect that the disputed domain name had been purchased by the Respondent as a means of extracting value from the Complainant, as this appeared as the sole plausible economic rationale of acquiring the disputed domain name at such high price. Within two weeks of acquiring the disputed domain name, the Respondent sought to negotiate its sale to the Complainant through GoDaddy Broker Services, which informed the Complainant that the Respondent was in daily contact with the broker regarding the sale of the disputed domain name and had made enquiries to the broker regarding the Complainant, and that the Respondent would likely accept a figure of USD 250,000, which later that day it increased to over USD 350,000 stating that someone else had offered that amount. The Complainant states that on January 7, 2020, it contacted the Respondent directly to confirm and clarify the Respondent’s intentions, and on January 8, 2020, the Respondent replied, claiming that it had acquired the disputed domain name with the intention of using it in connection with a start-up company. The Respondent also claimed that it did not know that the Complainant “was the buyer”, but it did not assert that it was unaware of the Complainant and its widespread use of the DAE trademark. The Respondent stated that it would be willing to sell the disputed domain name for USD 500,000, and asserted that it had recently received other offers. The Complainant points out that this price was well in excess of prices typically paid for three-letter “.com” domain names which are not inherently meaningful, and almost four times more than the value which the Respondent paid for the disputed domain name.

According to the Complainant, the evidence indicates that the Respondent targeted the Complainant’s DAE trademark with the intention of extracting profit from the Complainant, and it is improbable that the Respondent acquired the disputed domain name for such significant consideration for use in a start-up rather than to sell it to the Complainant, as within two weeks of acquiring the disputed domain name, the Respondent attempted to sell it to the Complainant via GoDaddy Broker Services. In the Complainant’s submission, the information provided by Go Daddy Broker Services that the Respondent mentioned the Complainant several times throughout their conversations and that it was reluctant to sell the disputed domain name because of the Complainant, the frequent contact the Respondent made with GoDaddy Broker Services following the closure of the auction, and the multiple identities through which it has sought to associate itself with the disputed domain name, are all evidence of the Respondent’s bad faith.

B. Respondent

The Respondent submits that the disputed domain name was first registered in 1995 for an advertising agency, and its registration was maintained until October 2019, when it expired. The Registrar then placed the disputed domain name into an expired domain name auction that was held on November 18, 2019.

The Respondent thought the acquisition of the disputed domain name would be a good investment and a valuable name to develop into a business. The Respondent asserts that it had no knowledge of the Complainant or of the DAE trademark when it participated in the tender along with 25 other entities and acquired the disputed domain name, and contrary to the Complainant’s allegations, the Respondent did not target the Complainant and participated in the domain name auction because of the inherent value of the disputed domain name which it believed could be registered by anyone, and to use it in connection with a new social networking service (“DAE” being a social media acronym that stands for “Does Anybody Else…”) or for a software-as-a-service project management startup (where “dae” can be pronounced as “day”). The Respondent asserts that prior to bidding on the disputed domain name, it did a quick trademark search in the United States Patent and Trademark Office (“USPTO”) database and did not find any existing live trademarks in International Classes 42 and 35, these being the classes of services it would most likely use for its own startup. The Respondent states that it has been registering common word domain names for investment and development since at least 2003. It maintains a list of 200 startup ideas and generally seeks to acquire names that are simple, short, and generic that can easily be branded and pivoted multiple times if needed without having to start from scratch. For a serial entrepreneur with experience pivoting startups in the past, this type of versatility in a name is very valuable.

In respect of the price that it paid for the disputed domain name, the Respondent notes that with a total of 26 bidders who wanted to acquire the disputed domain name, the Respondent was encouraged that it could mitigate its financial risk by selling it through another public auction if its business plan to develop the disputed domain name was unsuccessful. The Respondent notes that three-letter domain names have an inherent value which justifies the six- and seven- figure prices publicly reported for transactions that took place in 2019.

The Respondent points out that the Complainant has no registered trademark for the three-letter combination “DAE”, and most of the materials presented by the Complainant show that the Complainant is using this combination in connection with its full name Dubai Aerospace Enterprise and rarely standing alone. In view of this, the Respondent denies that the acronym “DAE” has acquired a secondary meaning referring to the Complainant, and points out that it is not a well-known or famous consumer brand. The Respondent further notes that the Complainant took no action to acquire or otherwise challenge the original owner’s registration and use of the disputed domain name, choosing only to file this claim as a “Plan B” option after it failed to win the domain auction and its unsolicited offers to purchase the disputed domain name from the Respondent were unsuccessful.

The Respondent maintains that it is entitled to register the disputed domain name that incorporates a short letter combination to which no third party has exclusive rights and is a common acronym for many uses unrelated to the Complainant, and has a legitimate interest in it since it does not target or otherwise act inappropriately to the Complainant.

The Respondent denies that it has acquired and used the disputed domain name in bad faith. According to it, the acquisition of the disputed domain name in a public tender with the participation of the Complainant denies such a finding, since the Respondent did not know of the Complainant at that time and did not intend to profit from the Complainant’s trademark. The Respondent further states that it does not constitute bad faith to offer generic or descriptive term domain names for sale, and the registration of generic domain names for investment constitutes use in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark. The responding to the repeated unsolicited inquiries by a GoDaddy broker to sell the disputed domain name is not evidence of bad faith. Rather, these unsolicited inquiries acknowledge that the Respondent has a legitimate interest in the disputed domain name.

The Respondent explains that the GoDaddy broker called it on November 21, 2019, one day after the Respondent paid the price for the disputed domain name, and made an unsolicited offer to purchase it. The Respondent advised the GoDaddy broker that it was not planning on selling the disputed domain name and desired to develop and possibly sell the future project. The Respondent agreed to hear the offer of the broker but advised him that the offer would have to be for a considerable amount in order for the Respondent to change its mind given that it had paid over six figures for disputed domain name. After making repeated inquires, the GoDaddy broker emailed the Respondent on December 3, 2019 and presented an initial offer of USD 200,000. After a few calls from the broker, the Respondent began doing more extensive research on potential interested buyers and discovered the Complainant. After discovering that the Complainant could be an interested party, the Respondent mentioned this to the broker during the negotiations and asked if he could confirm the identity of the inquiring party. The GoDaddy broker advised that this was a private transaction and would not disclose the buyer’s name. Between December 3 and December 9, 2019, the GoDaddy broker persisted in presenting offers and accepting a counteroffer. On January 6, 2020, the Respondent received an unsolicited email from a Dubai based domain name holding company and then contacted the GoDaddy Broker. On January 7, 2020, the Respondent received a direct unsolicited email from the Complainant advising that they were the party working with the GoDaddy broker, and only after that the Respondent became aware that the Complainant was seeking to purchase the disputed domain name. On January 8, 2020, the Respondent replied to the potential buyer from an alias account to maintain its privacy.

The Respondent requests a finding of reverse domain name hijacking against the Complainant. It asserts that this case is a variant of the “Plan B” cases that are an abuse of the Policy. According to the Respondent, the Complainant participated in the public auction and only filed the Complaint as a “Plan B” option after it dropped out of the auction and later was unsuccessful in purchasing the disputed domain name from the Respondent. According to the Respondent, the Complainant knew when it filed the Complaint that it could not establish any of the three elements of the Policy.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar

The first issue that needs to be addressed here is whether the Complainant has standing to file the Complaint, i.e., whether it has rights in a trademark for the purposes of the Policy.

As discussed in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) 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. As further noted in section 1.1.2 of the WIPO Overview 3.0, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular market niche does not preclude the complainant from establishing trademark rights, and as a result, standing under the UDRP.

The Complainant contends that it has unregistered rights in the DAE trademark for services in the aerospace business. In support of this contention, the Complainant has filed copies of its certificate of incorporation, of marketing materials, press releases and news articles discussing the activities of the company, and the KPMG report. These documents show that the Complainant has consistently used the DAE acronym and logo for 14 years as part of its official name, as a brand and as part of the name of each business unit of the Complainant’s group, and has become one of the global leaders in the aircraft leasing business where third parties refer to it by the DAE acronym.

In view of all the above, the Panel is prepared to accept on the balance of probabilities that as a result of the duration and nature of use of the DAE trademark, it has achieved a level of significance as a source identifier that is sufficient for a finding that the Complainant has unregistered trademark rights in the DAE trademark for purposes of the relevant test under the Policy, and as a result has standing to file the Complaint.

The Panel notes that as discussed in section 1.11 of the WIPO Overview 3.0, the applicable TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name for the purposes of assessing whether it is identical or confusingly similar to the DAE trademark of the Complainant.

The relevant part of the disputed domain name is therefore “dae”, which is identical to the DAE trademark. In view of this, the Panel finds that the disputed domain name is identical to the DAE trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name, because it was acquired and used by the Respondent primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainant disputes the Respondent’s claim that it had intended to launch a start-up business for which to use the disputed domain name, and points out that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it, and that within two weeks of the acquisition of the disputed domain name, the Respondent attempted to sell it to the Complainant via GoDaddy Broker Services.

The Respondent asserts that it had no knowledge of the Complainant and did not target the DAE trademark, and that it acquired the disputed domain name because of its inherent value and to use it in connection with a startup project. The Respondent points out that the Complainant has no trademark registration for “DAE” and that this acronym has other uses that are not related to the Complainant and to its business.

As summarized in sections 2.1 and 2.10.2 of the WIPO Overview 3.0, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy, and for a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.

The evidence in the case files shows that the acquired secondary meaning of the acronym “DAE” in relation to the Complainant is limited to the aviation industry, and supports the contentions of the Respondent that this acronym has alternative meanings and uses that justify the value of the disputed domain name without any reference to the Complainant, and the Complainant does not provide any evidence indicating that the Respondent would have targeted the Complainant at the moment it acquired the disputed domain name.

In view of the above, the Panel finds that the Complainant has failed to establish that Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given the Panel’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use. However, for the sake of completeness, the Panel decided to address the issue of bad faith registration below.

Paragraph 4(a) of the Policy requires the Complainant to prove that the Respondent has registered and is using the disputed domain name in bad faith, while paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel notes that the point at which registration in bad faith is to be assessed is at the date of acquisition of the disputed domain name by the Respondent. The question for the Panel here is whether it is more likely on the balance of probabilities that on November 18, 2019 the Respondent acquired the disputed domain name because it was aware of the Complainant’s rights in the DAE trademark, or that the Respondent was investing in an inherently valuable three-letter domain name for purposes unrelated to the Complainant. The Respondent has provided examples how this acronym is being or may be used to refer to other purposes, and in view of the absence of any registered trademarks of the Complainant and of the fact that the latter is not easily linked to the acronym “DAE” when searching on the Internet, the Panel accepts as reasonably possible that the Respondent was unaware of the Complainant and of its unregistered trademark rights when acquiring the disputed domain name. The evidence submitted by the Complainant shows that the Respondent was aware of the Complainant only later, when it became involved in negotiations with the GoDaddy domain name broker for an eventual sale of the disputed domain name to the Complainant. The Complainant has not provided evidence that these negotiations were initiated by the Respondent and that it had knowledge of the Complainant when it acquired the disputed domain name.

Therefore, the Panel finds that on the balance of probabilities it is not shown that the Respondent was targeting the Complainant when registering the disputed domain name. Consequently, the Complainant has failed to establish that the disputed domain name was acquired by the Respondent in bad faith.

D. Reverse Domain Name Hijacking

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. The definition of RDNH in the Rules is “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding.

The Panel finds by majority that there is insufficient evidence to accept the claim. The Complainant had legitimate reasons to suspect that it was specifically targeted by the Respondent given the amount the Respondent invested in order to buy the disputed domain name. This, coupled with the lack of active use of the disputed domain name following its acquisition, makes it likely that the Respondent has registered the disputed domain name mainly for speculative purposes. The Complainant may have had good reasons to believe that it would prevail in a proceeding under the Policy, in view of the statements of the GoDaddy domain name broker that – at least after the acquisition of the disputed domain name – the Respondent knew about the Complainant, and this may have created a legitimate suspicion that the Respondent was targeting the Complainant, although the Complainant did not succeed in proving this allegation on the balance of probabilities. The failure of the Complainant to meet its burden of proof, and the fact that the Complainant filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent are as such insufficient to conclude that the Complainant engaged in RDNH.

Therefore, the Panel denies by majority the request for a finding of RDNH in the present case.

7.Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Flip Jan Claude Petillion
Panelist

The Hon Neil Brown Q.C.
Panelist (Dissenting)

Date: April 20, 2020

Dissent on The Issue of Reverse Domain Name Hijacking But Otherwise Concurring

In the present case there should be a finding of Reverse Domain Name Hijacking (RDNH) because it is not simply that the Complainant has been unable to prove its case. That is not a ground for finding RDNH. Rather, there was no rational ground on which the Complainant could have succeeded and certainly no evidence to support such a view. Moreover, there was never a reasonable prospect of it succeeding and the Complainant should have appreciated this at the beginning and probably did appreciate it. The case was not only dead on arrival but dead on departure. Nevertheless, the Complainant filed this reckless claim for which there was no evidentiary basis.

The specific reasons why there should be a finding of RDNH are as follows.

First, the Respondent acquired the domain name in the open market at an auction where there were 25 other spirited bidders, a major factor militating against any impropriety by the Respondent. The Respondent won the auction fair and square. But the Complainant will not accept the obvious, that it lost. It must also surely have been obvious that what was motivating the Respondent was not a desire to cause trouble for the Complainant, of whom it had probably never heard, but to beat the other bidders, which it did.

Secondly, the claim was for an acronym, which can stand for anything, as all acronyms do, and not only for the Complainant’s initials, making the suspicion that the Respondent must have been targeting the Complainant highly unlikely. This should have been a warning to the Complainant not to make serious allegations of impropriety, which is all that the Complainant’s case consisted of, unless there was some evidence to support them.

Thirdly, the Complainant must have known or could have discovered, and not only because there had been a lively auction, that the Respondent must have had a right or legitimate interest in a domain name consisting solely of an acronym in wide use elsewhere, provided there was no untoward conduct by the Respondent, of which there was none.

Fourthly, the allegation of bad faith is the most serious allegation that can be made in this field of the law and yet it was made in the present case without any factual basis. It is apparently said that the Complainant became suspicious of the Respondent, a common feeling among losing bidders at an auction, particularly bad losers. But a respondent surely cannot be denied the benefit of a finding of RDNH simply because of a suspicion, which in any event was shown to be unfounded.

Finally, as has been stated many times, complainants are at risk on RDNH when they start with Plan A, try to buy a domain name but find the registrant of the domain name will not oblige them by giving the domain name away at a low price, and then resort to Plan B, which is to use the UDRP as a weapon and try to rewrite history. The present complainant seems to have resorted to Plan B Extra, to try, but fail to buy the domain name at a public auction, try and again fail to buy it by private treaty and then resort to the UDRP and accuse the registrant of bad faith and of having no right to own a domain name that the complainant has just been trying to buy from it. In that regard, this panellist finds himself echoing the sentiments of the distinguished three-person panel in BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811 where it observed “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (holding “Plan B” approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., WIPO Case No. D2015-0202 (use of UDRP proceeding to increase bargaining leverage in sale negotiations called “a highly improper purpose”).

A finding of RDNH should not be made simply because a complainant has been unable to prove its case. That is the reason why this panellist is not disposed to find RDNH unless there is a strong case for doing so. Thus, in the very recent decision in PolyTech A/S v. Richard Secor / TechSolutions LLC, FORUM Case, No. FA2003001887223, (April 15, 2020) in a marginal case on the issue of RDNH, the panellist together with two other panellists, decided it was not appropriate to find RDNH. But it is an equally valid proposition that where a strong case is made out for RDNH, panellists should not shy away from so finding. That is because there is a distinct public interest in discouraging frivolous claims where, as in the present case, the complainant appears to have been motivated by bad faith or a desire to harass the respondent.

Accordingly, I would make a finding of RDNH against the Complainant.

The Hon Neil Brown Q.C.
Panelist (Dissenting)
Date: April 20, 2020

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