A former member of ICANN’s intellectual property group represented a company in a UDRP. It didn’t go so well.
A World Intellectual Property Panel (WIPO) found (pdf) that Pacific House, LLC had engaged in reverse domain name hijacking on the libertas.org domain in a thorny case.
Although little is known about the complainant, it appears that he is creating an organization to espouse libertarian values. Libertas means in Latin freedom.
Libertas Institute, a libertarian nonprofit organization in Utah, acquired the domain name earlier this year. The Respondent was founded in 2011 and has associated trademarks.
By all accounts, the Respondent’s organization predates that of the Complainant. In fact, when the complainant initially applied for trademarks, the United States Patent and Trademark Office refused them, citing the respondent’s mark.
The respondent acquired the domain name earlier this year. He clearly has rights or legitimate interests in the domain name and uses it for his website.
Here’s where things extend beyond a mundane reverse domain name hijacking decision.
The complainant was represented by Don moody of the IP & Technology Legal Group, PC Moody is a former member of the ICANN Intellectual Property Constituency (IPC).
The law firm acquired libertas.org in 2019 on behalf of the plaintiff. But he let it expire later that year. The domain was sold through GoDaddy’s Expired Domain Auction, and another company took it over. The Libertas group is at least the second owner of the domain since its expiration.
The three-person WIPO panel (which includes a current IPC member) provided a detailed explanation of the errors in the complaint:
In this case, the complainant distorted or obscured relevant facts in his possession. The complainant said he owned the domain name from June 2019 until it “inadvertently expired when the registration expired” due to “technical issues” “coupled with staff limitations resulting from the global COVID-19 pandemic ”. The complainant’s lawyer, in a request for correspondence prior to filing the complaint in these proceedings, took the facts even further, claiming that the complainant held the domain name for “more than a year” and that the registration “Had expired in mid-late 2020”, in part because of the pandemic. In fact, the complainant himself did not register the domain name and never used it. The complainant’s law firm registered the domain name in June 2019, and the registration expired six months later in December 2019, before the COVID outbreak imposed “staff limitations.” The respondent did not acquire the domain name until more than a year later, after the domain name had been owned by other parties. In filing the UDRP complaint, the complainant was well aware of these facts and that this was an entirely different case from the “opportunistic re-registration” of an expired domain name which had been used by a trademark owner. for its website, as in the decisions cited in the complaint.
The Complainant was also familiar with the Respondent and his own prominent trademark rights to a corresponding name. The USPTO examining attorney cited the defendant’s trademark LIBERTAS INSTITUTE in denying the plaintiff’s trademark registration applications, until the plaintiff specifically excluded the defendant’s activities from the services in its own trademark application for avoid confusion. It is remarkable that the Complainant simply sidesteps this obvious motive in asserting the Respondent’s legitimate rights or interests. The Complainant has sought to discredit the Respondent’s defense of being “commonly known” by a name corresponding to the Domain Name by misleading the Respondent’s name as “Libertas Institute of Utah”. Otherwise, the Complaint largely disregards the second UDRP element and the Respondent’s own claims as to its rights or legitimate interests in the Domain Name. The Complainant urges the Panel to prioritize at all costs the restoration of a lost domain name to its “former owner”, which is not the subject of the Policy.
Both parties have legitimate interests in the domain name. One of the risks in the event of non-renewal of a domain name registration, regardless of the series of errors, is that another party with a legitimate interest will subsequently register the domain name and use it accordingly. sincerity. The record does not indicate here that the Respondent sought to exploit the Complainant’s junior mark, and the Respondent is certainly not responsible for correcting the Complainant’s errors in maintaining the registration of the Domain Name.
The complainant, in short, was in possession of sufficient facts to recognize that he was unlikely to prevail over the second and third elements of the complaint, given the clear language of the policy and existing precedents. The Complainant has strained or distorted facts, cited inappropriate decisions, and failed to confront the obvious claims of a prominent trademark rights holder.
In its additional filing, the Complainant argues that the Panel nevertheless cannot find RDNH as long as the Complainant prevails over a single element of the Complaint, such as the first element, its standing to bring a complaint because it holds European trademark registrations. Rule 15 (e) does not impose such a conclusion. A complainant must establish all three elements of the complaint, and if he does not provide credible support for one or two of these elements, the complaint is doomed and should not have been filed, imposing costs and other charges against the respondent. This is sufficient for a conclusion of the RDNH, as reflected in other WIPO rulings which point out flaws in a complaint with respect to one or two but not all three elements of the complaint. See Overview of WIPO 3.0, section 4.16; see also, for example., Proto Software, Inc. v Vertical Axis, Inc / PROTO.COM, WIPO Case No.D2006-0905.
Taken together, the factual inaccuracies and the strained reading of the Policy and Policy decisions by the Complainant reflect the Complainant’s bad faith in resorting to the UDRP to recover a Domain Name lost due to its own mistakes. The Panel finds that the Complaint represents a case of attempted reverse domain name hacking.
John Berryhill represented the owner of the domain name.
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