Attorney Steve® Domain Name Dispute Essentials - Using a finding of RDNH to support a malicious prosecution or wrongful initiation of civil proceedings claim.
Below are the findings of a WIPO arbitration proceeding that I was involved in that found the Complainant (an IP and copyright law firm handling Strike 3 adult pornography cases) engaged in RDNH and you can see that the language in the holding should put the Complainants and their attorneys on notice of a potential Wrongful Institution of Civil Proceedings claim - as it is known in Arizona (check your state law, and see their legal requirements and see if they discuss the Restatement of Torts which discusses administrative proceedings). To fully understand the claim, please review our blog on WICP.
Finding of WIPO UDRP Panel
Under Paragraph 15(e) of the UDRP Rules, “If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Respondent has requested such a finding in this case.
The majority of the Panel believes a finding of abuse is appropriate here.
Several of the factors set out in section 4.16 of the WIPO Overview 3.0 that support such a finding are present:
- “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant's lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,” (emphasis supplied).
- “(iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,” The Policy precedent ignored by Complainant here consists of two fundamental underpinnings of Policy proceedings – registration of the disputed domain name prior to Complainant's accruing trademark rights and failure to provide evidence of crucial allegations. “The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement.” DIGITI limited liability company v. Privacy Administrator, Anonymize, Inc / Michele Dinoia, Macrosten LTD, WIPO Case No. D2018-2148, quoting from Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555.
- “(viii) basing a complaint on only the barest of allegations without any supporting evidence.”
Further, Complainant, himself an intellectual property lawyer, is represented by counsel, a factor that some panels have found – and the Panel majority finds here – should be held to a higher standard. WIPO Overview 3.0, section 4.16; see also Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709 (“the Complainant, who is represented by specialist attorneys who appear to have specific expertise in this area, knew or ought to have known that this was the case.); Pick Enterprises, Inc., supra, (“The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable.”)
The majority of the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Contact a Trademark Litigation Law Firm
Attorney Steve Tip: Look at the language of your WICP or MP law. You will likely see elements of the tort such as "brought to harass", "no probable cause to bring", higher standards for those "holding themselves out to be experts," and it should be noted that the Restatement of Torts (and majority rule) does not recognize a "litigation privilege" in these instances.
Contact us at (877) 276-5084 if you are dealing with a trademark or domain name dispute, cease and desist letter, federal trademark infringement lawsuit, cancellation of a federal trademark, or other IP-related legal matter. You can also fill out the contact form and we will get in touch with you.