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New Standard for Reverse Domain Name Hijacking

UDRP Rule 1 defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” (further defined in Rule 15(c)).  There has been a mixed history in granting and denying this remedy for overreaching rights. Some Panels consider RDNH regardless whether it has been requested (even if respondent defaults in responding to the complaint); others will only consider the issue if requested. There are also variant views on the burden of proof. Some panelists simply ignore the request even though dismissing the complaint. In Impossible BV v. Joel Runyon, Impossible Ventures, D2016-0506 (WIPO May 22, 2016) (<impossibleproject.com>) the majority denied RDNH over the objection of the third-member:

I am conscious that the Panel majority do not regard the issue of RDNH as being of any great relevance in the context of this dispute. I fundamentally disagree.

The reasons for this fundamental disagreement (from one of the veteran panelists) are interesting and I’ll come back to them further below.

In the recently released WIPO Overview 3.0 the editors now acknowledge that “following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH” (Paragraph 4.16). It would appear from this that the standard has tightened in favor of RDNH although  there continue to be baffling examples, as noted by Andrew Allemann in Domain Name Wire: “I can’t believe it’s not RDNH: Gloo.com” referring to  Entertainment Technology Investments, Inc. d/b/a Gloo, LLC v. Contact Privacy Inc. Customer 011945202 / K Blacklock, D2017-0606 (WIPO May 31, 2017). The surprise in this case of not finding RDNH is that the registration of <gloo.com> predated the mark by many years. (The Panel didn’t even bother to explain itself!) Granting standing to complainants whose trademarks were not distinctive at the time of the domain name registration is now been woven into the fabric, but it should be a de rigour finding that overreaching mark owners be slapped with sanctions.

The one constant of marks not distinctive at the time of domain name registration is that by definition the registrations could not have been in bad faith regardless how subsequently they may have been used. There should be a rule (memorialized in the UDRP Rules or accepted by consensus) that complainants of this stripe be marked with an “A” (abusive) for commencing the proceeding. See also EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC., FA1703001722095 (<novelist.com>. RDNH requested and granted); Platterz Inc. v. Andrew Melcher, FA1705001729887 (Forum June 19, 2017) (<platterz.com>. RDNH requested and granted). The only reason for granting standing it to give complainants the opportunity to prove common law rights predating registration of the domain name.

WIPO Overview 3.0 points out “NB, parties may be aware that unlike in the UDRP system, certain national courts may (where invoked) impose monetary penalties (including punitive damages) where the equivalent of RDNH is found” (Paragraph 4.16). While domain name holders have prevailed in district court in direct cases under the Anticybersquatting Consumer Protection Act (ACPA) up to now there have been no cases in which they have commenced an action for damages after winning RDNH.  (There are cases in which domain holders lost in UDRPs and prevailed in ACPA actions).

There is now a case in which a prevailing Respondent with RDNH in hand has filed an action under the ACPA for $75,000, CORPORACION EMPRESARIAL ALTRA S.L. v. Development Services, Telepathy, Inc., D2017-0178 (WIPO May 15, 2017) (<airzone.com>).  See here for copy of complaint and comment from Domain Name Wire). This could be an important case, a test case, but there are a couple of difficulties, most notably personal jurisdiction. (An action for damages requires the court having personal jurisdiction over defendant). In an earlier case involving the same Respondent (who incidentally invariably prevails) the Panel declined to award RDNH. X6D Limited v. Telepathy, Inc., D2010-1519 (WIPO November 16, 2010).

What does the landscape look like, notwithstanding the new standard? In two cases by SPS Commerce, Inc.,  FA1703001724583 and 1724584 (Forum May 24, 2017) (<spcommerce.com>) and (<specommerce.com>) (same three-member Panels) RDNH was not requested and the Panels did not consider sanctions, although the factual findings would surely have warranted it:

Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services.  In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website.

In other words, Respondent’s rebuttal evidence was more than sufficient to prove its defense of rights or legitimate interests in the domain names.

Respondent in Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael meehan, FA170100 1715122 (Forum March 9, 2017 (<orderyouroil.com>) requested RDNH but it was not considered.  It does not appear that Respondent requested RDNH  in SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc, FA1704001726464 (Forum May 23, 2017) (<sog.com>) and it was not considered (probably not requested or considered because the mark predated the registration of the domain name).

In Technologies Sensopia Inc. v. BLUE NOVA INC. FA1704001725217 (Forum June 9, 2017) (<magicplan.com>) Respondent requested RDNH and it was granted because

Complainant knew or should have known when it filed this case that it could not possibly prove bad faith registration, since Respondent registered the Domain Name seven years before Complainant began using its MAGICPLAN mark.  It knew or should have known that its renewal/re-registration argument was universally discredited and would not be accepted by any Panel.  It knew or should have known that it would have to prove both bad faith registration and bad faith use in order to prevail.

The Panel in Impossible used similar language to make its point. Not only “should [the case] never have been launched” but

it is crucial that complainants and their advisers have it made very clear to them that in a system such as this where many respondents do not bother to respond, it is important that panels can rely upon the certificate at the end of the Complaint.

More specifically

if, as some panelists believe, failure on the part of respondents to conduct trademark searches prior to registering domain names may be evidence of bad faith registration and use, one might reasonably enquire why it is not equally abusive for a complainant to assert that the respondent has no relevant rights, when a simple trademark search in the respondent’s jurisdiction would have confirmed to the complainant that the respondent might well have such rights…. [W]hat makes matters much worse is that, as I have pointed out above, the Complainant was expressly informed months prior to the filing of the Complaint that the Respondent was the owner of registered trademark rights and a simple search of the United States Patent and Trademark Office would have verified it.

In Tupras Turkiye Petrol Rafinerileri A.S. v. See PrivacyGuardian.org / Wizarc Computing, D2017-0818 (WIPO June 6, 2017) () the Respondent does not make any allegation of RDNH but “the Respondent acting in person makes it clear that he regards the Complaint as totally unjustified and oppressive.” The Panel held that the “Rules do not require the Respondent to have made an express allegation of RDNH. In the circumstances, the Panel considers it appropriate to consider the issue of RDNH of its own volition.” Complainant’s allegations of earlier use and bad faith were unsupported by any evidence: “ The Panel confesses to finding grossly exaggerated the suggestion that advertisements by the Complainant for some product or service under the HEXMON mark “appear on almost all TVs and radios […] everyday”.

It does not appear Respondent requested RDNH in Crestron Electronics, Inc. v. ATTN: crestronasia.com, Domain Discreet Privacy Service / Transtrade Hong Kong Co. Limited (formerly known as Crestron Asia Limited), D2017-0777 (WIPO June 9, 2017) (<crestonasia.com> and other domains including a dot asia) but the facts (a distribution agreement silent on transferring domain names after termination) warranted it (same Panel as in Impossible).

The final issue concerns complainants represented by counsel or pro se. WIPO Overview 3.0 states that “[g]iven the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules [certification that the information found in the Complaint is not presented for any improper purpose], some panels have held that a represented complainant should be held to a higher standard.”  (This “higher standard” is surely in play in Crestron Electronics as it was in Impossible).  Where counsel is involved, there’s simply no excuse! In Normann Copenhagen ApS v. Peter Normann, D2017-0829 (WIPO June 14, 2017) (<normann.com>. Family name.) the Panel was explicit in its findings: “The Panel considers that the Complainant, who is represented by counsel, upon proper examination of the Policy and its application in a case like this should have realized that the Complaint could not succeed” (emphasis added).

Decisions giving complainants a pass for pro se or incompetence include FastTrak v. Virtual Point, D2017-0652 (WIPO May 16,2017) (<fasttrak.com>) and Clasen Quality Chocolate, Inc. v. Earthlink, Inc., D2017-0129 (WIPO March 1, 2017) (<cqc.com>).

In FastTrak, the Panel gave Complainant the benefit of doubt on the issue of reverse domain name hijacking since it was “not represented by counsel.” It concluded it could not “go so far as to determine the action was taken in bad faith [rather its complaint] was misdirected and generally wrongly pursued.” The Panel in Clasen Quality Chocolate denied RDNH because the complaint “appears, on balance, to be more misconceived than malicious in nature” (emphasis added). The head scratcher in this decision is that the Panel also stated that the “Complaint should not have been brought” which is the formulaic language used by panelists on the other end of the spectrum for finding abuse of the proceeding.

See also LaFrance Corp. v. David Zhang, D2009-0415 (WIPO May 15, 2009) in which the Panel stated that “[h]ad Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding…. Nevertheless, in his discretion the Panel declines to enter a finding of RDNH, but does find, as provided in paragraph 15(e) of the Rules, that the Complaint “was brought primarily to harass the domain-name holder.”)

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.

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