Neither mere lack of success of the complaint nor presenting a weak case is sufficient in itself to constitute reverse domain name hijacking under paragraphs 1 (definition) and 15(e) of the Rules. Reverse domain name hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The complainant must be found to have acted intentionally for an improper purpose. Paragraph 3(b)(xiv) of the Rules of the Policy defines “improper purpose” as including harassment. It provides that in commencing the administrative proceeding, the complainant certifies that “the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].”
The fact that a domain name was registered prior to the complainant acquiring a trademark is not ipso facto harassment. The test is “whether a complainant should have appreciated at the outset that its complaint could not succeed,” Prime Pictures LLC v. DigiMedia.com L.P., D2010-1877 (WIPO February2, 2011), citing Yell Limited v. Ultimate Search, D2005-0091 (WIPO April 6, 2005). “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy,” Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO January 8, 2001).
A complainant may not necessarily have knowledge of all the facts at the outset to have appreciated the respondent’s right or legitimate interest in the disputed domain name. However, if on its face a “complaint includes facts that demonstrate no likelihood of success, the respondent is entitled to a finding of Reverse Domain Name Hijacking,” Urban Logic, citing 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, D2008-1173 (WIPO October 24, 2008). It is said that there must be a colorable claim. The complainant cannot use “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy,” Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004).
The definition and the Rule mark out wide boundaries of abusive conduct. A complaint is unjustified for a number of reasons of which the most prominent is the timing of the respondent’s registration of the disputed domain name. The Complainant has to proffer some evidence “as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its [trademark],” Labrada Bodybuilding Nutrition.
Conversely, the Respondent must show knowledge on the part of Complainant of Respondent's right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by the Complainant in the face of such knowledge. Where the parties have communicated with each other prior to the commencement of the proceedings, but the respondent has withheld materials it later submits in its defense, RDMH will be denied because “Complainant had no actual knowledge of Respondent’s prior use” of the mark in its own business, Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., D2009-1244 (WIPO November 24, 2009).
To satisfy its burden of proof the respondent must show that it disclosed evidence to the complainant of such quality that a fortiori it was abusive to have commenced a proceeding. For example, in Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) the Complainant in argued and the Panel concurred that it is “unreasonable to expect Complainant, who originally filed this proceeding against a ‘Domains by Proxy’ undisclosed registrant, to know the myriad individual and corporate identities he maintains.”
In contrast, the Complainant in Prime Pictures acquired its trademark years after the Respondent registered the domain name and offered no evidence, leading the Panel to conclude that “[a]ny reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith.”
