I wanted to pull some of the main points out of my recent UDRP so that we can become more familiar with the process and be able to easily respond if faced with a similar situation.
Instead of attempting to paraphrase I’ve added the main section verbatim. It’s not that long, and I think it will give you insight into the whole process and how the panel addresses each section.
Some important things to take away:
-The complainant needs to prove all three points, in the below case the panel didn’t even look at point 2, the respondents rights to the name, or point 3, the name was registered in bad faith.
-Reverse domain hijacking seems to be subjectively enforced, depending on the preference of the panel. In my mind someone that is trying to take someone else’s domain simply because they forgot to renew the domain is hijacking. The panel names this misguided and not malicious, but in my mind the complainant should be held to account regardless of how much they know or don’t know about the process or their rights. The very nature of the UDRP suggests to me malicious intent, but it’s not really a big deal, would have been a bigger deal had I paid for counsel.
-It’s very easy to respond to a UDRP, all you have to do is follow a template. In this case I think I could have submitted a one word response and won, as the complainant defeated himself with the first point that he had to prove.
-It’s interesting to see what some people will do or pay to get a domain. This guy spent around $1800 on a losing battle and could have simply bought the name for that price. He apparently did email me about the name, but in the first email he never even mentioned the domain name. The second email from the same person looked like spam. But even after I didn’t respond to his emails, he had so many other avenues to try and recover the domain before filing the UDRP.
I sold one a few months ago through afternic that started with a low ball offer. The broker told me that the buyer was the previous owner, I told him to go ahead and accept the offer if the buyer could prove he had previously owned the domain. For me it’s the right thing to do and it’s relatively rare that this happens.
So take a few minutes and read through the decision. If you’ve never looked at one, it will at least help you familiarize yourself with the process.
Claimant is an entrepreneur developing a business involving certain automated
software processes with respect to property management and insurance
certificates. The name for this business is “CertAssured.” The development
efforts for this business began in 2014, and in furtherance of this effort,
Complainant registered the Disputed Domain Name, <certassured.com>.
This development effort did not progress smoothly, however, and in 2017
Complainant dissolved his company and allowed the registration of the Disputed
Domain Name to lapse.
Complainant has recently renewed his efforts to develop his business and
anticipates launching it in November of 2018 under the name of CertAssured,
The Disputed Domain Name is the exact name of Complainant’s software
product currently under development.
Complainant originated the idea of using of the expression “certassured” as a
product a name.
Respondent is not the owner of any product or service called CertAssured, owns
no company called CertAssured, and is not participating in a business going
concern called CertAssured.
When Complainant renewed his efforts to start his business, he researched the
availability of the Disputed Domain Name, and he learned that it was not being
offered for sale. He also learned the name and contact information for the current
owner, Respondent. Complainant attempted to contact the Respondent on
several occasions. Thereafter, Complaint again researched the availability of the
Disputed Domain Name and learned that it was for sale for $2,519, which
demonstrates that Respondent is attempting to benefit from Complainant’s
business using the Disputed Domain Name, which belongs to Complainant, and
which also demonstrates Respondent’s bad faith.
Respondent is a domain name investor with more that 20,000 .com domains.
One of these is the Disputed Domain Name that Complainant admits he failed to
In registering the Disputed Domain Name, Respondent was not in any way
responding to Complainant specifically or attempting to register the Disputed
Domain Name hoping Complainant would want it back. At the time, Respondent
did not know about Complainant and Complainant’s efforts to start a business.
Respondent does not have time to research such matters. Rather, in registering
lapsed domain names, Respondent examines each prospect to decide whether
such might eventually be desirable to some business or brand.
In situations in which previous domain name owners wish to re-acquire their
lapsed domain names, Respondent generally will, as a matter of curtesy, sell the
involved domain name back to the original owner for a nominal fee associated
with the Respondent’s costs, provided the person or entity can prove that they
were in fact the previous owner.
Respondent has rights to the Disputed Domain Name because registering and
selling expired domain names is his business.
Respondent has not committed bad faith because he had no way of knowing
about the Complaint and his failed software project, and as such, he could not be
attempting to interfere with Complainant’s rights.
Of course, the Disputed Domain Name is for sale; such is Respondent’s
Respondent did not initially see Complainant’s emails to him. With respect to the
first, Complainant failed to mention the Disputed Domain Name, and Respondent
did not see the second email until after the current action was filed.
Complainant’s Additional Submission
Respondent’s point that he does not have time to research failed ventures hoping
that the previous owners will eventually want back abandoned domain names is
contradicted by his statement that he examines lapsed domain names for
potential value to somebody; previous owners are an obvious pool of such
Respondent attempted to sell the Disputed Domain Name back to Claimant for
an amount far in excess of Respondent’s costs. After Complainant contacted
Respondent about re-acquiring the Disputed Domain Name, the price jumped to
$2,519, whereas before it was not even listed for sale.
Complainant is not engaged in reverse domain name hijacking. Reverse domain
name hijacking applies only to situations in which “…a company or individual
attempts to assert a trademark claim against the owner of a domain whose
ownership of the domain pre-dates the other party’s ownership of the trademark.”
This is not what is happening in this case. Complainant owned the Disputed
Domain Name for approximately 4 years before Respondent acquired it.
Respondent’s statement that he has rights in the Disputed Domain Name
because he is in the business of investing in domain names is irrelevant. Such
does not, by itself, impart rights to any domain name.
Respondent’s asserts that he could not have acted in bad faith because he could
not have known about Complainant’s failed business. This is false. Respondent
did know this at the time of Complainant’s efforts to reacquire the Disputed
Domain Name because Complainant told Respondent about Complainant’s
previous business and his future plans to re-start his business.
Respondent’s statements that he did not see Complainant’s emails is false. The
Disputed Domain Name became available for purchase after these emails, which
means Respondent must have seen them.
Respondent’s statement that he will return a domain name for a small fee is
false. As of September 5, 2018, the public auction asking price was $15,500,
with a reserve price of $2,750; neither is a “small fee.”
D. Respondent’s Additional Submission
Respondent is an ethical investor in domain names. He does not extort or hold
Respondent recognized the potential value of the Disputed Domain Name when
he decided to register it, and at that time he had no knowledge of Complainant.
Contrary to what Complainant asserts, Respondent did not recognize the
potential value of the Disputed Domain Name only after and because of
Complainant’s efforts to contact Respondent.
Complainant is attempting reverse domain name hijacking because he is
attempting to use the UDRP to take what he has no right to have and for which
he does not wish to pay.
The price for the Disputed Domain Name Respondent is asking for is in line with
the general prices for domain names, which is in the $2,000 to $5,000 range.
Respondent is not willing to offer Complainant any other arrangement, such as a
small fee, as noted above, because Complainant has behaved badly in this
The Panel finds that Claimant does not have trademark rights in the expression
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
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
A necessary element of Policy ¶ 4(a)(i) is the existence of a trademark in which
Complainant has rights.
Trademark rights can be established for purposes of the Policy by proving a
national trademark registration. See Advance Auto Parts, Inc. d/b/a Advance
Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain
Admin, FA 1625582 (FORUM July 23, 2015) (holding that Complainant’s USPTO
registration is sufficient under Policy ¶ 4(a)(i), even though Respondent
reportedly resides in the Isle of Man).
Alternatively, trademark rights can be established for purposes of the Policy by
demonstrating that an association has developed in the minds of the public
between the mark and Complainant, commonly called “secondary meaning.”
See AOL LLC v. DiMarco, FA 1275978 (FORUM Sept. 9, 2009) (“‘Secondary
meaning’ is acquired when ‘in the minds of the public, the primary significance of
a product feature . . . is to identify the source of the product rather than the
product itself.’”). The required connection in the mind of the public is generally
demonstrated by presenting evidence of usage of the mark in the marketplace
over time, sales figures, expenditures on advertising, etc. all to a level deemed
sufficient by the Panel. See Gourmet Depot v. DI S.A., FA 1378760 (FORUM June
21, 2011) (“Relevant evidence of secondary meaning includes length and
amount of sales under the mark, the nature and extent of advertising, consumer
surveys and media recognition.”).
In the present case and with respect to the expression “certassured,”
Complainant has failed to present any evidence of a trademark registration or of
the development of secondary meaning.
As such, Complainant has failed to establish that he has rights in a trademark,
and as such, he has failed to establish the first element of the Policy.
This being the case, the Panel respectfully declines to analyze the remaining two
elements of the Policy. See Netsertive, Inc. v. Ryan Howard/Howard
Technologies, Ltd., FA 1721637 (FORUM Apr. 17, 2017) (finding that because the
complainant must prove all three elements under the Policy, the complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The
Blindman, FA 1731056 (FORUM June 23, 2017) (deciding not to inquire into the
respondent’s rights or legitimate interests or its registration and use in bad faith
where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in the ICANN Rules for the Policy, as
“…using the Policy in bad faith to attempt to deprive a registered domain-name
holder of a domain name.” See Rules ¶ 1. This concept can apply to the
circumstance described by Complainant, as noted above, in which “…a company
or individual attempts to assert a trademark claim against the owner of a domain
whose ownership of the domain pre-dates the other party’s ownership of the
trademark.” However, the concept is broader than this and applies to other
situations as well, including situations in which a complainant knows or should
have known at the time the complaint was filed that he could not prove one of the
essential three elements of Policy ¶ 4(a). See Personally Cool Inc. v. Name
Administration Inc. (BVI), FA1212001474325 (FORUM Jan. 17, 2013)(“Examples
of Reverse Domain Name Hijacking include when the complainant knew or
clearly should have known at the time that it filed the complaint that it could not
prove one of the essential elements required by the UDRP…”).
Although reverse domain name hijacking might arguably be found in this matter,
the Panel declines to do so. After reviewing the record as a whole, the Panel is
convinced that in filing the complaint and pursuing this matter Complainant has
been misguided as opposed to malicious. See Instrumentation Northwest, Inc. v.
INW.COM c/o Telepathy, Inc., D2012-0454, (WIPO June 1, 2012)(“Finally, the
Panel declines to find reverse domain name hijacking on this record, although a
finding of RDNH could arguably be supported here. Be that as it may, after
carefully weighing all of the circumstances of the case, the Panel chooses to
interpret this Complaint as misguided inasmuch as it was doomed from the start
and should not have been brought. There is no hard evidence, though, that
Complainant was ill motivated in lodging the Complaint.”)
Having not established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED, and further, the Panel Concludes
that the Complainant has not committed reverse domain name hijacking.
Accordingly, it is Ordered that the <certassured.com> domain name REMAIN
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