FastTrak v. Tech Admin, Virtual Point, WIPO Case No. D2017-0652 (Evan D. Brown, May 16, 2017), the Panel denied a Complaint seeking the transfer of fasttrak.com. This was a particularly interesting case that involved a simultaneous federal court proceeding and a request for suspension of the UDRP proceeding that was denied.
In the UDRP case, Complainant owned a federal trademark registration for FASTTRAK (plus design), which it had used since 2011. The disputed domain was alleged by Complainant to be registered by Respondent in 2015. Sounds good for the Complainant, but then entered Respondent. Rather the file a formal response, Respondent simply submitted to the Panel a copy of the Reverse Domain Name Hijacking complaint it had filed against Complainant in federal court, and requested suspension of the UDRP proceeding.
The Panel first determined not to suspend the UDRP case before it. According to WIPO's rules governing UDRP disputes, "in the event of any legal proceedings initiated prior to or during an
administrative proceeding in respect of a domain-name dispute that is
the subject of the complaint, the Panel shall have the discretion to
decide whether to suspend or terminate the administrative proceeding, or
to proceed to a decision." The Panel, using its discretion, reasoned "The Complainant has asked for a decision in the dispute, and from a
certain perspective, is entitled to an answer to the question for which
it paid a filing fee to the Center." The Panel also noted that the federal complaint raises the same defenses the Respondent would have raised if it had filed a formal response to the UDRP Complaint.
Next, the Panel confronted whether to consider the federal complaint filed by Respondent as evidence, and determined that such complaint should be considered and given "notable weight." It reached this conclusion because the complaint was signed, file-stamped, and submitted to the a federal court under the guidelines of Federal Rule of Civil Procedure 11.
Turning finally to the merits of the case, the Panel gave deference to the allegations made by Respondent in its federal complaint, in which Respondent claimed to have registered the domain prior to any rights Complainant had in the FASTTRAK mark. The Panel did this because all of the evidence in the UDRP case, including the WHOIS report submitted by Complainant, supported such a finding. Indeed, the WHOIS report for the disputed domain showed a registration date of 2004, not 2015. "Accordingly, given the Panel’s finding that the Respondent has
controlled the registration of the domain name since before the
Complainant’s trademark rights arose, the Respondent could not have
registered the disputed domain name in bad faith. For this reason, the
Complaint fails on the third UDRP element. Since the three UDRP elements
are conjunctive, i.e. the Complainant must prove all three, it is not necessary to analyze the first two elements."
Respondent went for the jugular and, as noted above, claimed that Complainant engaged in Reverse Domain Name Hijacking. "If after considering the submissions the Panel finds that the Complaint
was brought in bad faith, for example in an attempt at Reverse Domain
Name Hijacking or was brought primarily to harass the domain-name
holder, the Panel shall declare in its decision that the Complaint was
brought in bad faith and constitutes an abuse of the administrative
proceeding." Mercifully, the Panel took it easy on Complainant, noting that Complainant proceeded without counsel, and that while the Panel found its actions to be "misdirected and generally wrongly pursued," the filing of the UDRP Complaint did not rise to the level of bad faith. And so, the Panel denied the Complaint and left the parties to fight it out further, if they want to, in federal court, which "will not be bound by the decision of this Panel."