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Complainant’s Duty to Inform Itself as a Defense to Reverse Domain Name Hijacking

The sole remedy for respondents hauled into a UDRP proceeding without cause is a finding of reverse domain name hijacking. The term “reverse domain name hijacking” is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Rule is given substance in Rule 15(e) which states 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 Policy does not authorize the Panel to impose monetary sanctions. (As a footnote, the CIRA Domain Dispute Resolution Policy provides for damages up to $5,000 for “unfairly and without colour of right” commencing a proceeding to cancel or obtain a transfer of registration of the disputed domain name, paragraph 4.6.) Under the UDRP a finding of RDNH can be regarded more as a moral victory. It stigmatizes without tangible consequence.

RDNH, however, is not for the asking. It places on the respondent a burden of proof to demonstrate that in commencing the proceeding the complainant was acting in bad faith (see for example XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October 28, 2010) discussed in Friday’s Note and Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) (“unreasonable to expect Complainant, who originally filed this proceeding against a ‘Domains by Proxy’ undisclosed registrant, to know the myriad individual and corporate identities he maintains.”) A domain name registered after the complainant’s acquisition of a trademark requires more from the respondent to establish its bona fides; the reverse is true when the respondent registers a domain name prior to the establishment of a complainant’s business. In Suzannah R. Noonan v. Kevin Sneed, FA1008001343308 (Nat. Arb. Forum October 22, 2010) the Panel stated that he was”troubled by Complainant’s attempt to secure <energyfix.com>, a domain name that was registered and used to sell goods for months before Complainant’s first use of the ENERGYFIX mark.” Timing plus making a bona fide offering of goods or services is an insurmountable obstacle to bad faith and grist for RDNH.

This brings up an interesting point about a party’s duty to investigate easily obtaining facts about domain names. Investigation is ordinarily discussed as the respondents duty imposed under its representation and warranty to the registrar and ICANN (paragraph 2 of the Policy). It is not generally thought about for the complainant, but it too has a duty of investigation. This is established in Rule 3(b)(xiv) – a Federal Rules of Civil Procedure Rule 11 equivalent – which provides that the complainant must

certif[y] that the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate, that th[e] Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

As the Panel in General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 26, 2006 noted: “This is “essentially a certification and expansion of the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3.”

The Panel in Suzannah R. Noonan held that a “simple WHOIS search would have informed Complainant that the disputed domain name had been registered seven months before her first use of the ENERGYFIX mark and therefore could not have been registered in bad faith. It is also evident from the Complaint that Complainant was aware that Respondent was selling goods using the disputed domain name, one of the activities that gives rise to rights and legitimate interests in a domain name.

Complainant waited 9 years before commencing the proceeding. “While the facts as to Complainant’s actual knowledge cannot be established with certainty, the Panel concludes that the weight of the evidence indicates that Complainant was aware that she was not entitled to transfer of the <energyfix.com> domain name.” All these reasons warranted a RDNH finding.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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