An RDNH finding is typically only made where there has been an abuse of process, as in this case.
In summary the Respondent was a US Company that filed for an Australian trademark for the term threebestrated.com.au (the Domain) on 2 October 2015 and on the basis of that application registered the Domain. The Respondent operates a successful business internationally assisting people to find local businesses and professionals (and had done so since 2014, and 2017 in Australia). Subsequently, the Respondent’s application lapsed and as a matter of policy it was no longer eligible to hold the Domain.
The Complainant sensing an opportunity to take advantage of the Respondent’s long established business and take its good will, filed an auDRP alleging that as the Respondent was no longer eligible under auDA Policy, and that it had acted in bad faith by breaching the warranties given to the Registrar each time it renewed the domain. The Complainant went so far as to apply for and to register a trademark for the term ThreeBestRated as a logo. It commenced trading in May 2019.
Rightly the Panel looked at the elements of the auDRP (something lost on the Complainant) and said the following –
Certainly previous panels have found that a Respondent’s knowing renewal of a domain name without having a right to use it under the eligibility rules of the Policy may in particular circumstances amount to a breach of the Respondent’s warranty upon renewal and as a result is evidence of registration or use in bad faith under the third element of the Policy (see section 3.2A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition). However, it does not necessarily follow that a Respondent in this position can be said to have “no rights or legitimate interests” in the disputed domain name for the purposes of the second element of the Policy.
In this case, the Respondent registered the disputed domain name on the basis of a valid Australian trade mark application and it subsequently made legitimate use of that mark in the course of trade in Australia. The Respondent has provided a reasonably substantial amount of evidence, including evidence of the extent of its trade mark use and turnover and has demonstrated that it has used the disputed domain name in the course of a bona fide offering of business services in Australia on an ongoing basis since 2017.
The Complainant failed on the second limb of the auDRP, and the Panel did not see it necessary to address the bad faith issue in light of its comments above.
In making a finding of RDNH the Panel held –
It follows that in circumstances where the Respondent registered and used the disputed domain name long before the Complainant and that the Respondent was carrying on a legitimate business activity and was not targeting the Complainant in any way, the Complainant should have been aware that it would be unable to succeed under this limb of the Policy. It appears to the Panel that in bringing these proceedings the Complainant has sought to use the Policy in the hope of obtaining the disputed domain name for its own business and consequently diverting the Respondent’s goodwill and custom in Australia. On this basis, the Panel finds that the Complaint amounts to a case of reverse domain name hijacking.
This was an interesting case which provided an insight into how businesses are trying to use the auDRP as a tool to obtain domains (and in this case business), without having to buy them, and in some cases depriving the owner of their livelihood. Fortunately, an experienced Panelist applied the Policy as it was intended, to stamp out cybersquatting which was a problem in the early 2000s when the Policy was developed.
Unfortunately for the Respondent, it went to the expense of appointing lawyers to defend itself and while saving the Domain was out of pocket, while the Complainant who was internally represented spent $2000 without any consequences. These are the kind of cases where people have previously argued for a system of awarding costs, as is the Policy in Canada. What do you think? Comment below