Today UDRP POLICE DBS received the decision regarding the domain name which was decided in the Respondent’s favor.
The Complainant in these proceedings represented by Anand & Anand, India (More will be discussed on them later) operates a pharmaceuticals and biotech business with operations in India, distributing product more than 30 countries. The Complainant holds registrations for the trademarks RPG and RPG LIFE in India which it uses to designate pharmaceutical, veterinary and sanitary preparations for medical purposes. The Indian registration for the mark RPG has been in effect since 1999 and the registration for RPG LIFE since October 2012, the latter claiming use from 1999.
The Respondent represented by UDRP POLICE DBS, was a humble gaming store in Milwaukee who registered the domain name October 28, 2005.
The basis for the Complainant’s argument was their claim to superior rights to the domain name rather than the abusive registration and use on the part of the Respondent (although that did not stop them from alleging this in their complaint).
They further alleged that “RPG” was a term invented by their organization, that had no other meaning attached to it, however this was easily disproved by a simple Google search demonstrating the extensive use of the acronym within a variety of different contexts.
The Panel however did find that due to the Complainant’s trademark registrations which had been in effect since 1999, this was sufficient in overcoming the first hurdle; namely, that the Complainant had rights in a corresponding mark which was identical / confusingly similar to the domain name in dispute.
So how did the complaint fail?
Simple, they failed to acknowledge the Respondent’s legitimate rights and interests in the domain name.
It’s fair to say that the Respondent doesn’t have the “global popularity” or the USD 47million in global revenues that the Complainant boasts in its complaint, but a legitimate interest in a domain name is all the policy requires and is the only burden a Respondent must prove.
The Panel held;
“UDRP proceedings are concerned with abusive registration of domain names and are not a test of who has the better rights to a disputed domain name nor who holds the most similar domain names.”
And rightly so, the Respondent registered the domain name in dispute for the purpose of running a social website for the RPG player community (RPG a common abbreviation in the gaming industry for “Role-Playing-Game”) , providing them also with a platform to discuss their RPG experiences.
Surprisingly however, the Complainant’s complaint suggests he was aware of this, even citing the Respondents other RPG related domain names that formed part of this activity.
Panellist Nicholas Weston should be commended, not simply for his approach but also for not having the fear to find Reverse Domain Name High-jacking as so many panels today are reluctant to find.
An extract of UDRP POLICE DBS argument on the issue of Reverse Domain Name Hi-jacking is highlighted below:
“The Respondent would like to point out that the Complainant is represented by knowledgeable legal counsel. Complainant’s representatives have been involved in many previous UDRP disputes and therefore have sufficient knowledge and understanding of the purpose of the policy and its limitations…. What is more revealing is that Complainant’s legal counsel were found guilty of Reverse Domain Name Hi-jacking only 3 months ago… The Respondent understands that the UDRP provides no monetary compensation for the unnecessary legal costs that have been imposed on the Respondent or any real penalty for the harassment they have been subjected to, however Reverse Domain Name Hi-jacking is supposed to act as a deterrent or at least to discourage such behaviour but it would appear Complainant is undeterred.”
It is fair to say that the Complainant’s legal counsel is mostly to blame, when a client approaches their legal counsel he puts faith In them to provide him with sound legal advice, even putting their reputation on the line based on the information that is provided to them.
As revealed in the Response, only 3 months prior to the current case UDRP POLICE DBS were successful in finding a Complainant guilty of Reverse-Domain-Name Hi-jacking the domain name CROMA.COM; the legal representative? Anand & Anand, India.
The Panel held:
“In the present case, the Panel considers that the Complainant’s professional representative should have appreciated, even on a rudimentary examination of the Policy and its application in this area, that the Complaint could not succeed where the Respondent’s Disputed Domain Name is a widely recognized acronym and is being used to promote goods and services available for purchase in that field, as it had no reasonable hope of meeting the conjunctive requirement of paragraph 4(a) of the Policy.”
2 Reverse Domain Name Hi-jacking cases under their belt, who would have known? Trademark owners need to carry out their own due diligence when it comes to filing UDRP complaints as it is ultimately their responsibility. People always remember the brand that was found guilty of Reverse Domain Name Hi-jacking, rarely the lawyer that filed the complaint.
The Panellist went beyond the mere wording of the policy in relation to Reverse-Domain-Name Hi jacking which simply defines it as:
“using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”
“it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith and that there was “no plausible explanation” as to the Respondent’s use (and presumably choice) of the Disputed Domain Name. That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking. Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent. Indeed, in a curious inversion of the roles of the Complainant and the Respondent, it was the Complainant who tendered evidence that the Respondent’s website was ostensibly concerned with Role Playing Games and activities associated with it and hence entirely legitimate and in good faith.”
So well done Mr Weston, hopefully this case will allow some who have lost faith in the UDRP and the dispute bodies that administer it to depend upon it once again.