The majority of a three member UDRP refused to find Reverse Domain Name Hijacking (RDNH) despite the fact they found the complainant failed to disclose a previous relationship between  the parties and a previous UDRP between the domain holder and the former company that the trademark holder acquired.

The majority of the panel also found that the complaint’s failure to disclose a previous UDRP did not effect the outcome of this UDRP saying “The Panel recalls that the present decision is limited to the facts and circumstances as applied to the Policy criteria.”

Hum when it comes to the domain holders past conduct, even on domains having nothing to do with the Complainant, Panels have had no problem in taking into account the domain holders previous UDRP’s results and even based much of their opinion taking domain names away from domain holders based on other UDRP loses and finding a history of cybersquatting.

If UDRP panels can take into account other UDRP decisions when it comes to domain holders they need to take into account other UDRP’s decisions involving trademark holders.

However it seems not to be the case according to panelist, Christopher J. Pibus and Reinhard Schanda

The domain names at issue were Fleischmann.com and Roco.com

The Complainants are Modelleisenbahn Holding GmbH and Modelleisenbahn GmbH of Bergheim, Austria, who were represented by Diana Sattler, Austria, and the Complainants’ predecessors-in-title have been in the business of making and selling model trains since the early 1960’s and the Complainants own many several trademark registrations for the marks ROCO and FLEISCHMANN going back to 1953 in association with model trains and accessories.

The Complainants operate websites at roco.cc and fleischmann.de.

“”The Respondent served as a distributor for the products of the Complainants and their predecessors-in-title, but according to the Complainants the distribution contract expired on December 31, 2013.

On March 4, 1996 the Respondent registered the domain name roco.com and on October 7, 1998 the Respondent registered the domain name fleischmann.com.

The Respondent has used the respective domain names in association with websites that offer for sale and promote model trains and accessories (primarily those of the Complainants) for more than 15 years.

In 2005 a predecessor of the Complainants filed a complaint with the Center against the Respondent’s company, Roman and Co., in respect of the disputed domain name, , but withdrew the complaint on learning that the Respondent had been given express permission by the previous owners of the company to register that domain name (the Respondent’s contention). The Complainants’ contention is that that complaint was withdrawn because the then owner of the company concerned was declared bankrupt.

The Respondent has filed detailed, substantive evidence, which establishes to the Panel’s satisfaction that he did not register or use the disputed domain names in bad faith. In reaching this conclusion, the Panel notes the following facts, which have been proven by way of affidavit, statements, and documentary evidence by the Respondent and various non-party witnesses:

1) the Respondent had commercial relationships with the Complainants’ predecessors-in-title, which predated the Complainants’ ownership of the ROCO and FLEISCHMANN trademarks by many years.

2) In the course of those relationships, the Respondent sought and received express permission from the prior owners of the ROCO and FLEISCHMANN trademarks to register the disputed domain names, and to use those names in connection with active websites.

3) With respect to both the ROCO and FLEISCHMANN trademarks, written statements from the prior owners (Peter Maegdefrau – ROCO and Rolf Fleischmann – FLEISCHMANN) corroborate the Respondent’s claims that the permission to register the disputed domain names was granted and as to the relevant annexed affidavit concerning “fleischmann.com” such permission was at that time without any restrictions: “no strings attached”.

4) The history of prior ownership of the ROCO and FLEISCHMANN trademarks, as set out in the Respondent’s evidence, is confirmed by a review of the United States Patent Trademark Office records for U.S. Trademark Registration No. 0778717 for FLEISCHMANN and U.S. Trademark Registration No. 1,809,816 for ROCO.

The Panel has also reviewed the Respondent’s account of a prior UDRP case (WIPO D2005-0111) which was initiated by the Complainants’ predecessor-in-title Roco Modellspielwaren GmbH (and its owner, Peter Maegdefrau) with respect to the Respondent’s registration of (held in the name of Roman and Co), one of the same disputed domain names in this decision. In that case, the same Respondent filed the same explanatory evidence as he did here, and the complaint was withdrawn.

The Panel is concerned that the Complainants in the current proceeding failed to disclose the prior dispute, and the full circumstances surrounding the Respondent’s long term use of the disputed domain names. The Complainants’ foundational claim that the Complainant itself had “never granted permission to the Respondent” to use the disputed domain names, although literally true (and consistent with the Complainant’s acknowledgement that one of its subsidiaries did formerly have a contractual relationship with the Respondent), was not a fair or complete characterization of the situation.

In all the circumstances, the Panel accepts the Respondent’s explanation of his historical role as distributor of ROCO and FLEISCHMANN branded products, and finds that his registration of the disputed domain names was not done in bad faith.

Accordingly, the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy.

On the issue of Reverse Domain Name Hijacking the panel said this:

By a majority the Panel dismisses the Respondent’s request for a finding of Reverse Domain Name Hijacking. While the Panel is concerned that the Complainants in the current proceeding failed to disclose the prior dispute, and the full circumstances surrounding the Respondent’s long term use of the disputed domain names, the majority feels that it has inadequate information as to the background to establish that the Complaint was brought in bad faith.

“The Panel recalls that the present decision is limited to the facts and circumstances as applied to the Policy criteria.”

There may be broader trademark licensing or related questions between the parties beyond the scope of the Policy; in this respect it is noted that while the Complainants’ predecessors-in-interest appear to have granted permission for the Respondent to register the disputed domain names the Complainants (as current trademark owner) plainly take issue with such registrations. In this respect the Panel notes that the Policy is necessarily limited in scope, but that the present decision does not foreclose any court options the parties may have.

In his concurring opinion (in part) panelist Tony Willoughby said this:

I agree with my co-panelists that the evidence filed by the Respondent clearly establishes that the disputed domain names were registered and used by the Respondent with the permission and encouragement of the Complainants’ predecessors and that the Complaint should be dismissed.

However, I respectfully disagree that the Respondent’s request for a finding of Reverse Domain Name Hijacking be dismissed.

The Panel Majority is concerned that there is less than full information as to the factual background; and it is true that in certain respects the parties’ submissions lack clarity. Both parties operated through various corporate entities over the period in question, but their dates and spheres of operation and the distinctions between them are not clearly set out.

Crucially, as to the failure of the Complainants to make any reference in the Complaint to the withdrawal of the earlier complaint (see above), it is not clear when the Complainants first became aware of that earlier complaint. It seems barely conceivable that they were unaware of it prior to this administrative proceeding, but on the papers before the Panel it is at least possible and I am prepared to rest my argument for a finding of Reverse Domain Name Hijacking on other grounds.

I start from the proposition that in this context a parent company cannot hide behind one of its subsidiaries. The Complainants must be treated as having the knowledge of the first Complainant’s subsidiary that entered into a distribution agreement with the Respondent in 2005.

I then ask myself the question: is it possible that that subsidiary entered into that agreement unaware that the Respondent was a pre-existing distributor of the Complainants’ products in the United States of America? Answer: “No”. Is it possible that that subsidiary would have entered into that agreement without having investigated to some extent the Respondent’s history of distributing those products in the United States of America? Answer: “No”. Even if at that stage the first Complainant’s subsidiary was unaware of the Respondent’s use of the disputed domain names, is it conceivable that over the following 8 years of the distribution agreement that subsidiary was unaware that the Complainants’ products were being promoted and sold online under and by reference to the disputed domain names? Answer: “No”.

When they filed the Complaint, the Complainants:

1. knew that to succeed in this Complaint they had to establish that the disputed domain names were both registered in bad faith and are being used in bad faith;

2. knew from their exhibited WhoIs searches, that the disputed domain names had been in the hands of the Respondent for 18 years and nearly 16 years respectively, long before the Complainants or any of their subsidiaries came on the scene, thereby rendering the Complainants’ statement in the Complaint that they “had never authorised registration of the disputed domain names”, at best, meaningless;

3. knew from their exhibited screenshots from the WebArchive WaybackMachine, that the disputed domain names had long been used to connect to websites promoting the sale of the Complainants’ products in the United States of America;

4. knew that throughout the 8 years of the distribution agreement with the first Complainant’s subsidiary those same websites had continued to promote the sale of the Complainants’ products in the United States of America.

It is clear, in my view, that when the Complainants filed the Complaint they must have known that the Complaint was doomed to failure. They took no steps to make complaint about the disputed domain names until after termination of the distribution agreement. To their knowledge it was never a case for the Policy and should not have been launched. For me, this is a case of Reverse Domain Name Hijacking.””