Sometimes a law firm will file a UDRP as the complainant, even if they have no experience with intellectual property, which can lead to disastrous results.



However, Hale Law, P.A., a Florida-based firm that specializes in car accidents, was wise enough to hire intellectual property firm Maxey Fisher to represent them when filing a case against GoToHale.com. Despite this, the outcome was still unfavorable. The domain had been registered by Roger Hale over 20 years ago, while the complainant company was formed in 2018, and its principal, Patrick Hale, only became licensed to practice law in 2014. The complainant likely did not know the identity of the domain owner when it filed the case, but once they found out through WIPO, they amended their dispute naming Roger Hale, which was a rookie mistake. At this point, the case was dead in the water, and Roger Hale's attorney, John Berryhill, called out the complainant for this. The complainant later tried to withdraw the case with prejudice, but the panel agreed with the respondent that this would not be fair because the dispute was filed in bad faith and constituted reverse domain name hijacking.

The panel stated that the complainant should have known better, given the advice of experienced intellectual property advisors, and the fact that they registered their conflicting mark 20 years after the respondent registered their domain name.

There was no evidence to suggest that the respondent intentionally created confusion, and the complainant's accusations were based on speculation and were not substantiated. The panel determined that this was a clear case of reverse domain name hijacking.

In UDRP cases, domain ownership and the complainant's identity play significant roles in determining the outcome. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a process used to resolve disputes over domain names.

Domain Ownership: The ownership of a domain name is essential in evaluating a UDRP case. If the respondent (the current domain owner) can demonstrate legitimate rights or interests in the disputed domain, it becomes challenging for the complainant to establish bad faith registration or use of the domain. The length of time the respondent has held the domain can also be a factor in determining the legitimacy of their claim.

Complainant's Identity: The identity of the complainant is another crucial aspect. It is essential for the complainant to have a valid legal interest in the domain name or the corresponding trademark rights. If the complainant lacks relevant intellectual property rights or if they are not a recognized entity in the industry, it weakens their case.

If a law firm files a UDRP as the complainant, they should have expertise or experience in intellectual property matters to present a strong case. Failing to do so may result in negative outcomes, as demonstrated in the example provided earlier.

It is important for both parties involved to thoroughly research the ownership history of the domain and consider the strength of their claims before initiating a UDRP case.