Panelist rules that Valhallan filed a cybersquatting dispute in bad faith.
A World Intellectual Property Organization panelist has found (pdf) Valhallan, LLC to have tried reverse domain name hijacking.
Valhallan, an esports training company, uses the domain name valhallan.com (one L in the first instance). It filed the dispute against vallhallan.con (two Ls).
There’s no doubt that vallhallan.com’s registrant registered the domain to target the Complainant. But it wasn’t to steal business; he set up a gripe site about the Complainant.
Panelist Robert A. Badgley ruled that the Complainant didn’t show that the domain owner lacked rights or legitimate interests in the domain for its usage as a gripe site.
Badgley also found that the Complainant was less than forthcoming in its filing. For example, he felt that the Complainant should have mentioned that its “still pending” U.S. trademark application had been refused:
First, Complainant offered no evidence to support its bald claim that it has “clearly demonstrated” common law rights in the U.S. for the VALHALLAN mark. One would have expected some effort to prove such rights, especially after the USPTO rejection, but none was forthcoming in the Complaint.
Second, and most importantly to this RDNH finding, the fact that Complaint omitted the USPTO refusal from its pleading, and even referred to the USPTO application as “still pending,” is, to put it most gently, highly misleading. It is akin to telling a court of law, “My client has filed a lawsuit in another jurisdiction against XYZ, which is still pending,” without telling the court that the lawsuit was dismissed six months ago and is now on appeal.
It is not the job of a UDRP complainant’s counsel to make out the respondent’s case for him, but a modicum of candor is required, particularly given the lack of discovery, cross-examination, and so forth in UDRP cases. Complainant, represented by counsel (indeed, the same counsel who received the USPTO refusal notice), has abused this process by concealing the true status of the USPTO application. If there had been no Response filed in this action, the Panel would have been under the false impression that the USPTO application was sailing along smoothly, with no obstacles in its way.
In fairness to the Complainant, the USPTO rejection was merely a non-final action, which doesn’t necessarily preclude a mark from being registered. The Complainant responded to the office action prior to filing this cyberquatting dispute, so you could argue that it was still pending.
Badgley also found that the Complainant should have mentioned its attempt to buy the domain from the Respondent before filing the dispute.