Complainant omitted key parts of pre-dispute correspondence in its filing.
A recent UDRP decision examined whether a German building products company attempted reverse domain name hijacking when it challenged the domain name lehmann.com. The World Intellectual Property Organization (WIPO) panel concluded that the complainant’s conduct, including the omission of material pre-dispute correspondence, amounted to attempted reverse domain name hijacking and ruled in favor of the domain holder.
Otto Lehmann GmbH initiated the complaint against the domain registered as lehmann.com. The domain is registered to Tucows and is part of Tucows’ surname portfolio, a registration practice that includes offering email services to those who hold domains in the portfolio. Prior to filing the UDRP complaint, Otto Lehmann and Tucows engaged in pre-dispute communications during which the complainant sought to acquire the domain. In those exchanges, Tucows explained the history of the registration, its legitimate use, and its history of defending domain names under UDRP proceedings.
Despite the pre-filing correspondence and Tucows’ clear statements about ownership and prior defenses, Otto Lehmann proceeded to file the dispute under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Crucially, the panel found that the complainant omitted material portions of the email correspondence exchanged before the complaint was filed, presenting an incomplete factual record to the adjudicators.
The three-person WIPO panel evaluated the record and noted several key considerations. First, the panel concluded there was no evidence that the domain was registered or used in a manner that targeted the complainant or that would support a finding of bad faith under the UDRP. Second, the panel considered the respondent’s established and legitimate use of the disputed domain, which weighed against the complainant’s claims.
The Panel concludes that the Complainant, represented by counsel, ought to have known that it could not have succeeded under the Policy, there being no targeting of the Complainant and a well-established legitimate use of the disputed domain name.
In addition to that, the Complainant’s assertion that “the industrialized model used by the Respondent does not reflect any genuine or bona fide use of the LEHMANN mark, rather constituting a pretext for holding the disputed domain name as a tradeable asset while generating incidental revenue, a practice that UDRP panels have already declined to recognize as conferring legitimate interests” is not supported by the precedents in which it replies. A review of the decisions cited by the Complainant shows that they are clearly distinguishable from the circumstances of the present case, as they involved domain names used in connection with websites seeking to attract Internet traffic by creating an undue association with well-known individuals or celebrities…
…Moreover, another serious concern arises from the Complainant’s omission of material portions of the email correspondence exchanged between the Parties prior to the commencement of this proceeding. Under this Panel’s view, the selective omission of correspondence plainly material to the assessment of the Respondent’s intent constitutes a deliberate attempt to present the Panel with an incomplete and misleading account of the factual record.
This is particularly troubling given the certification required under paragraph 3(b)(xiii) of the Rules that the information contained in the Complaint is, to the best of the Complainant’s knowledge, “complete and accurate”. UDRP panels have previously emphasized the significance of this certification, particularly where a complainant is represented by counsel…
…The Panel further notices that, if the Complainant’s assertion is correct, such conduct may also raise concerns under the professional and procedural standards applicable to German counsel; for present purposes, the selective omission of material correspondence is relevant to the Panel’s assessment under the Rules, including the certification required by paragraph 3(b)(xiii), and to the question of Reverse Domain Name Hijacking.
The panel’s findings emphasize two main points relevant for domain dispute practice and UDRP filings. First, a complainant must carefully assess whether the facts before filing support each element required by the UDRP: that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; that the registrant has no rights or legitimate interests in the domain; and that the domain was registered and is being used in bad faith. Where the registrant operates a legitimate surname portfolio or otherwise demonstrates legitimate use, complainants should be cautious about initiating a formal proceeding.
Second, full and transparent disclosure of pre-dispute correspondence and material facts is essential. The UDRP rules require a certification that the information in a complaint is complete and accurate. Omitting material exchanges—particularly those that illuminate the registrant’s intent or legitimate use—can undermine a complainant’s case and expose the complainant, and potentially their counsel, to findings of reverse domain name hijacking. Panels have consistently treated selective disclosure as a serious procedural flaw that can affect both the merits and the integrity of a filing.
In this matter, Otto Lehmann was represented by Kapellmann und Partner Rechtsanwälte mbB, while Tucows was represented by John Berryhill. The panel’s decision to find reverse domain name hijacking serves as a reminder to brand owners and their counsel to conduct thorough pre-filing reviews and to present a complete and accurate record when bringing UDRP proceedings.