Reverse Domain Name Hijacking
by Philippe Rodhain
 

The purpose of the Uniform Dispute Resolution Policy, known as the UDRP, is primarily to determine disputes relating to the acquisition of domain names in bad faith.† Under the UDRP, the Complainant must prove that (i) the disputed domain name is identical with or confusingly similar to a trade mark or service mark in which it has rights; (ii) the domain name holder has no right or legitimate interest in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith.††

Whilst in the majority of dismissals of the complaints to transfer the domain name at issue the Complainant failed to demonstrate condition (iii) above, there is an increasing number of dismissed cases in which the Complainant has attempted to show the domain name registrant's bad faith only on the basis that Complainant has a trademark identical with or similar to the said domain name. Such attempts have been exposed by UDRP Panels who have rejected the corresponding complaints.

Complainants' attempts to circumvent the Policy in order to strip the legitimate registrant and user of a desired domain name simply because the Complainant holds a trademark, shows a misappreciation of the spirit of the UDRP.† This behaviour is known as "Reverse Domain Name Hijacking" (RDNH). 

According to UDRP Rule 1, RDNH is "using the Policy (UDRP) in bad faith to attempt to deprive a registered domain-name holder of a domain name".† This definition must be linked to UDRP Rule 15(e) which stipulates in particular that "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.

The Panels are not entitled to assess whether or not the complaint has been made in bad faith at their own initiative. Such an assessment must be requested by the domain name holder. More importantly, the burden of proof rests with the domain name holder who must demonstrate that the Complainant knew, before lodging the complaint that the Respondent (domain name holder) has an unassailable right or legitimate interest relating to the disputed domain name or that there is no evidence of bad faith registration and usage (WIPO administrative decisions of 19 March 2002, Case No D2001-1502, Arjen Verkaik v. Crownonlinemedia.com, of 4 January 2001, Case No.† D2000-1151, Goldline International Inc. v. Gold Line, of 31 October 2000, Case No. D2000-1224, Sydney Opera House Trust v. Trilynx Pty. Limited, of 17 July 2000, Case No. D2000-0565, Plan Express Inc. v, Plan Express).  

In light of the administrative panel decisions given under the UDRP to date, the grounds of RDNH can be divided into three main categories. 

  • The Complainant's knowledge before filing the complaint

Frequently, the Panels have found a case of RDNH based on the Complainant's knowledge prior to lodging the complaint.

In DW.com, the domain name registrant used its DW mark as a domain name for promoting its own business. The disputed domain name was connected to an active Website and used in connection with a bona fide offering of goods and services. Consequently, the Complainant must have been aware that the domain name holder clearly was not a cyber squatter. Accordingly, its complaint was considered as an abuse of proceedings and thus a case of RDNH. (WIPO administrative panel decision of 2 January 2001, Case No. D2000-1202, Deutsche Welle v. DiamondWare Limited).  

In an analogous case, the Complainant first engaged in correspondence with the domain name holder before filing a complaint.† Even though the Respondent confirmed that the domain name was being used and that the Website was being developed, the Complainant decided nevertheless to file a complaint. The Panel considered that the Complainant was culpable of attempted RDNH in the subsequent terms: 

-         "The Respondentís explanation for registration of the domain name was manifestly reasonable. The Complainant is now attempting to revisit the issue by issuing this Administrative Proceeding. The complaint is based almost solely on a claim that the Respondent had no intention to use the disputed domain name, despite repeated assurances from the Respondent that it had every intention to do so. In these circumstances, the Panel finds the Complainant guilty of attempted Reverse Domain Name Hijacking " (WIPO administrative panel decision of 23 July 2002, Case No. 2002-0420, IKB Deutsche Industriebank AG v. Bob Larkin). 

Alternatively, sometimes the Respondent's answer to the Complainant's queries may be considered as a legitimate reason to file a complaint. In two decisions given in March 2001, although the Panels denied the transfer of the disputed domain names, they also dismissed the RDNH claimed by the Respondent because of the dubiousness of their replies. Indeed, each Respondent proposed to transfer the disputed domain name for an unreasonable price. (WIPO administrative panel decisions of 29 March 2001, Case No. D2001-0132, State of California Managed Risk Medical Insurance Board v. Family Solutions Inc., and Patrick Hagan, of 18 March 2001, Case No. D2000-1656, William Grant & Sons Limited v. Daniel Scotto) 

In a similar case in August 2002, the domain name registrant contacted the Complainant with offers to licence the disputed domain name and proposed an exorbitant licence fee. This proposal was regarded as a legitimate ground for filing a complaint. (WIPO administrative panel decision of 22 August 2002, Case No. D2002-0272, The Medicis Pharmaceutical Corporation v. MRX Technologies Inc and Neil Gerardo).†

Additionally, a very slight prospect of success of the complaint may be regarded as a ground for RDNH as well. 

  • Little prospect of success of the complaint

As the saying goes, "ignorance of the law is no excuse", and where the complaints are manifestly unfounded, the Panels will make a finding of RDNH. 

In PAPARAZZO.com, the Panel indeed found that the Complainant committed a RDNH: 

-         "The primary enquiry must be whether the Complainant instituted the proceeding without having any real prospect of success. The Panel considers that there could not have been any informed expectation by the Complainant that the complaint would succeed on the first criterion under the Policy. The Complainant seemed to think that the possession of the domain name paparazzo.com.br was enough to entitle it to paparazzo.com. Evidence of widespread use and public acceptance of the name was sparse. Moreover, the Complainant could not realistically have expected that an entity in either the British Virgin Islands or in Hong Kong would necessarily have heard of a mark for a generic name used by a firm in Brazil. Accordingly, the Panel is prepared to make a finding of reverse domain name hijacking"(WIPO administrative panel decision of 29 May 2002, Case No. D2002-0189, GLB ServiÁos Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc)). 

It is interesting to note that the Complainant did not show either common-law trademark rights or an actual trademark registration so that the Panel could not find the first criterion proved. 

Although on the one hand the fact that a trademark is held does not automatically constitute a legitimate reason to file a complaint, on the other hand in a number of cases the Complainants were not considered to have committed RDNH because of the similarity of their trademarks and the disputed domain name or the non-use of the disputed domain name. 

In VITALITYONLINE.com, the Complainant was not considered to have committed a case of RDNH due to the similarity between their trademark and the disputed domain name: 

-         "The Panel has found that the complaint fails, but given the Complainantís trade mark rights, the similarity of the Domain Name to the Complainantís trade mark and the failure (albeit for good reason) of the Respondent to respond to the Complainantís letters, the Panel does not believe that this complaint constitutes an abuse of the Policy"(WIPO administrative panel decision of 5 July 2001, Case No. D2001-0656, Rusconi Editore S.P.A v. Bestinfo). 

In another case, the Panel also declined to find a case of RDNH because of the existence of the Complainant's trademark rights and the absence of usage of the disputed domain name: 

-         "When Complainant filed the Complaint, it was the owner of U.S. trademark registrations for the mark WARM THINGS. At the time the complaint was filed, Respondent was not making active use of the domain name in connection with a website or in connection with provision of any goods and services. Taken together, Complainant had a good faith basis for bringing the complaint." (WIPO administrative panel decision of 18 April 2002, Case No. D2002-0085, Warm Things, Inc. v. Adam S Weiss).

A malicious and reckless, or at least unfair, attitude of the Complainant could also be regarded as evidence of RDNH. 

  • The malicious and reckless attitude of the Complainant

In SMARTDESIGN.com, the Panel found that the Complainant committed RDNH in the following circumstances:

-         "Putting this in the kindest light that the Panel can, the Panel believes that in its eagerness to obtain the Domain Name the Complainant lost all sense of proportion. It took on the guise of a third rate barrack room lawyer and advanced arguments that were tortuously artificial in the extreme, reckless both as to as to the justification for making those arguments and the seriousness of the overall charge against the Respondent, who was manifestly no cyber squatter. This complaint was a clear abuse of the Policy designed to deprive the Respondent of her domain name. The allegations of bad faith were without substance and should never have been made." (WIPO administrative panel decision of 18 October 2000, Case No. D2000-0993, Smart Design LLC v. Carolyn Hughes).

In that case, it should be noted that the complaint had obviously been made in bad faith with regard to the unreal arguments submitted by the Complainant. 

Selective disclosure may likewise be considered to show malicious intent.  

In ARMANI.com, the Complainant omitted to set out that failed negotiation between the parties had taken place before filing the complaint. The Panel therefore found that the omission of the background was surprising and did not comply with the UDRP, which requires especially the Complainant's action to be transparent.  

Accordingly, the Panel found there was a clear case of RDNH in the terms as follows: 

-         "The complaint states (at paragraph 20) in accordance with the Policy, that ""the Complainant certifies that the information contained in the complaint is to the best of the Complainantís knowledge complete and accurate"". The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant to paragraph 15(e) of the Rules, that this complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding" (WIPO administrative panel decision of 20 July 2001, Case No. D2001-0537, G.A. Modefine S.A. v. A.R. Mani). 

In light of these illustrations, it can be concluded that the concept of RDNH reinforces the aim of the UDRP procedure, which is to deal only with a very narrow type of conflicts. It is actually intended to prevent cyber squatting, which excludes ordinary cases of trademark infringement, which are left to the common courts. (WIPO administrative panel decision of 29 August 2002, Case No. D2002-0493, Christian Dior Couture S.A. v. Domain Administrative Jeffbhav).  

Otherwise, surely the lessons that can be learnt from these cases are that potential Complainants should evaluate carefully (ideally with their attorney) the necessity of undertaking a UDRP procedure before deciding to lodge a complaint, be prudent in their correspondence with the domain name holder, and be transparent in their complaint. In default, the complaints could be vulnerable to a counterattack of RDNH. Bad faith is no longer an "argument" left to the discretion of the Complainant only. 

Copyright © 2002
PHILLIPS ORMONDE & FITZPATRICK

Philippe Rodhain
Intellectual Property Lawyer
philippe.rodhain@pof.com.au
 

This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney specialized in the issue and laws. 

No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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