When a UDRP Complaint Becomes a Case of Reverse Domain Name Hijacking

UDRP complaints do not always go wrong, but when they do, they can go terribly, terribly wrong. This claim, as recorded by the Arbitration Mediation International Forum, is a prime example of why it is crucial that you work with someone experienced in domain dispute policy. With the right brand enforcement partner, Gary Chupik of Elite Mindset should have known he had no case. Instead, he proceeded with the complaint and was found reverse domain name hijacking (RDNH).

What Happened?

Complainant, Gary Chupik of Elite Mindset, submitted a complaint to the Forum that the disputed domain name ELITEMINDSET.COM be transferred to him. The Forum set a deadline by which the Respondent could file a response to the complaint, which they did in a timely manner.

The Complaint

Complainant relies on his rights to the ELITE MINDSET trademark – use in commerce since 2017.
Complainant states that his name is officially trademarked by the United States Patent and Trademark Office.
He submitted evidence of ownership of U.S. trademark registration for which he applied on January 30, 2019 and which was registered on August 20, 2019.
Complainant submits that Respondent is an “obvious cybersquatter” and maintains a “hollow or shadow website” on ELITEMINDSET.COM. This sends mixed signals and makes people think he is out of business, costing him tens of thousands of dollars.
When live, the Complainant states the disputed domain resolved with stock footage and lorem ipsum placeholder text. The pages were left blank with little or no content. The website had no association with the meaning of “elitemindset”. No social media.
Complainant states that the ownership of the website which commenced on February 22, 2008, has not changed as of 2019; and that he has been tracking this for at least 3 years.
He states the domain was not being used for “elitemindset” and therefore was not being used for any intended purpose except to “cybersquat”

Complaintant Tried to Acquire the Domain Name Previously

Although he knew it was being cybersquatted on, he attempted to acquire the disputed domain name for $100 with an online service.
His maximum offer was $300. Respondent declined the offer.
In the complaint, he states he re-entered the same negotiation offering $1,500 this time. Respondent increased his asking price to $7,500.
Complainant left the negotiation as he took the view that the asking price was unaffordable.

Complainant found of Reverse Domain Name Hijacking

After that, the Respondent’s website had been “parked”. Complainant alleges that this was to eliminate the proof that the content had not changed since 2008, and, that the website had nothing to do with an “elite mindset”.

The Respondent’s Response – Reverse Domain Name Hijacking

Respondent asserts that he purchased the disputed domain name on April 18, 2017 for USD $500.00 plus escrow fees.
He states that he “launched” the website to which the disputed domain name resolves in April 2017 and that it “went live” until February 2019
Respondent alleges to have parked his website but uses it for email, cloud storage, and file sharing.
Respondent submits that the disputed domain name is composed of two ordinary English words and refers to a common, descriptive phrase: “elite mindset”. This phrase is commonly used to describe a winning mentality and a Google search for the phrase shows over 18 million results.
Respondent states that his decision to purchase the disputed domain name was also motivated because he knew it could be resold.
Respondent states that when he purchased the disputed domain name, he had no knowledge of Complainant or Complainant’s business, or alleged marks and asserts that Complainant only applied to register his trademark in January 2019, more than a year and nine months after Respondent purchased the disputed domain name.
The Respondent submits that a bare claim that a mark has been in use from a certain date, without more evidence, is insufficient to establish trademark rights.
Furthermore, Complainant provides no evidence to support its claim of lost revenue.
Respondent asserts that the phrase “elite mindset” is not exclusively or even primarily associated with Complainant and that Complainant provides no evidence of public recognition, or that any person associates the phrase “elite mindset” with the Complainant or his business.
According to the Respondent he received an offer of USD $300 for the disputed domain name from the negotiation service and submitted a counter-offer of USD $2,500. This counter-offer was binding for seven days and it expired without being accepted by the buyer.
Months later, on February 19, 2019, the Respondent received a new offer of USD $2,500 for the disputed domain name via the same negotiation service provider. Respondent submitted a counter-offer to sell for USD $7,500. This counter-offer was binding for seven days, but it too expired without being accepted by the buyer.

What Did the Complainant Do Wrong?

For a successful UDRP proceeding, the Complainant has to prove three items:

Complainant must prove the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent points out that the Complainant’s trademark is for “EM ELITE MINDSET” (with the “EM” letters as the dominant portion of the mark) which is not identical with, or confusingly similar to, the disputed domain name.

Complainant must prove the Respondent has no rights or legitimate interest in respect of the domain name.

Respondent asserts that he had a right to register the disputed domain name for the project he was intending to develop, for its intrinsic descriptive and commercial value or for any other legitimate purpose. Respondent claims that he has used the disputed domain name in a legitimate manner, with a public-facing website, business email (Google G Suite), and, a parking page.

Complainant must prove the domain name was registered and is being used in bad faith.

Respondent argues that Complainant cannot show that he had any rights in the ELITE MINDSET mark at the time Respondent registered the disputed domain name. Respondent’s responses to Complainant’s offer to purchase is not considered bad faith. He has the right to sell the disputed domain name for whatever price he deems appropriate. The Respondent did not solicit the Complainant at any point.

The Timeline: Reverse Domain Name Hijacking

Respondent argues that Complainant has no entitlement to the disputed domain name; that this Complaint constitutes an abuse of the Policy and is an attempt at Reverse Domain Name Hijacking.

The timeline:

April 18, 2017 – The Respondent registered the disputed domain name on April 18, 2017;

(Sometime between 2018-2019, unclear) – Complainant tries to purchase the disputed domain name

January 30, 2019 – The Complainant files his trademark applications with the USPTO

October 28, 2019 – The complaint is filed

The timeline of Reverse Domain Name Hijacking

The Finding of Reverse Domain Name Hijacking

Respondent submits that Complainant knew or should have known that its trademark applications were filed more than a year and nine months after the Respondent had acquired the disputed domain name (and more than 10 years after the original registrant had registered it).

Complainant knew or should have known, at the time it filed the complaint, that it could not prove that the disputed domain name was registered in bad faith.

Respondent alleges that Complainant tried to purchase the disputed domain name and when that was unsuccessful, he then started the complaint to take it as a “Plan B”. Respondent argues that Complainant covets the disputed domain name for its own business and that he engineered this complaint after Respondent declined to accept the Complainant’s offers to purchase the disputed domain name. This is a classic “Plan B” case.

Clear knowledge of a lack of bad faith and filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, is grounds for a case of Reverse Domain Name Hijacking.