Firm flubs UDRP, resulting in reverse domain name hijacking finding

It could have won its case if it had consulted a domain attorney.

A firm that provides medical training made a mistake by failing to consult a competent attorney ahead of filing a UDRP.

Metasin LLC filed the dispute (pdf) with World Intellectual Property Organization against the domain name emcrit .com. The firm uses the matching .org domain name for a blog and podcast site.

The firm holds a trademark for EMCrit. It could also have easily proven that the domain was being used in bad faith: it resolves to pay-per-click landers with medical keywords and to zero-click landers that, today, popped up a bogus security alert when I visited the domain.

All that was left was for Metasin to show that the domain was registered to target its trademark.

The domain was registered in 2001, which was ahead of the trademark existed. A bit of research with DomainTools or by a domain attorney would have shown that the domain changed hands multiple times since 2001, and Metasin’s alleged common law trademarks predate the most recent owner’s control of the domain.

But Metasin’s complaint states, “This dispute concerns the domain name emcrit .com, created on [unknown].”

Panelist Nick Gardner found this was a case of reverse domain name hijacking since Metasin didn’t show that its rights predate the current registrant’s.

You only get one bite at the apple in UDRP, and Metasin cannot refile this case with information that it ought to have obtained ahead of its initial filing. (Rather, panels will deny the refiling.)

The decision states that Metasin was internally represented. While it saved on attorney fees, it ended up throwing its money away. The easiest and most cost-effective course of action at this point might be to buy the domain; it’s listed on Afternic for less than $5,000.