Except where complainant’s claim is truly egregious for which there can be said to be a “settled policy”––Happy as Clams, Inc., a California Corp., DBA Date Like a Grownup v. Heather Dugan, D2014-1655 (WIPO November 1, 2014)––there is no fixed standard for declaring reverse domain name hijacking. This is because in the view of some panelists declaring RDNH is discretionary, although the concept of discretion appears to contradict the Rules which state that the Panel “shall declare.” Rule 15(e) reads:
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 varying views of what constitutes “abuse of the administrative proceeding” are summarized in WIPO Overview2.0, Paragraph 4.17. That views do vary is not surprising because not every alleged abuse of the Policy is egregious and much depends on the factual circumstances of registration and use and complainant’s motivation. RDNH is not warranted, for example, against a complainant for simply failing to prove its case. Something more is necessary to elevate complaining into abuse.
The “settled policy” is expressed in The American Association of the Order of St. Lazarus, Inc. v. Thierry Villejust, D2014-0739 (WIPO August 11, 2014): “Complainant either knew or should have known, at the time of filing the Complaint, that it was not the ‘only legitimate organization’ to use the name ‘The Military and Hospitaller Order of Saint Lazarus of Jerusalem’ since the crusades.” “[E]ither knew or should have known” is the critical factor. See also Happy as Clams in which the Panel found Complainant should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith. And in Clearwater Systems, Inc. v. Glenn Johnson/Clear Water Systems of Remington Inc., D2014-0878 (WIPO August 5, 2014) the Panel went even further. “On its own initiative … [it] finds the Complainant committed an abuse of process.” Ordinarily, where there is no request for RDNH it is not declared although there is nothing in the language of the Rule that prevents such a finding.
Divergence from the settled policy on the lenient side is also not unusual––in fact many panelists appear to hold respondent to a higher than preponderance standard for proving RDNH and are reluctant to issue the sanction unless the abuse is truly egregious. A recent illustration of this, for example, is Bespoke Services Group S.A. v. Garth Piesse, D2014-1533 (WIPO November 5, 2014) in which the Panel declined to find RDNH because it appeared “Complainant may have misunderstood the requirements of the Policy, rather than being motivated by bad faith.” This is challenged by the view that ignorance of UDRP procedures and evidentiary demands is not a defense to RDNH.
Panels composed of members having different views can result in a schizophrenic decision that expresses both views. In TV Sundram Iyengas and Sons Limited v. P.A. Gordon, D2014-0814 (WIPO August 11, 2014), for example, the Panel held it was not making a formal finding of reverse domain name hijacking even though “Complainant’s case has significant weaknesses and that its conduct in making numerous unsupported assertions of fraud and illegal behaviour” was not to be condoned, but nevertheless concluded that “making unsupported assertions of fraud and illegal behavior” is a sound basis for issuing the sanction.
The settled policy can be expressed also to reject reverse domain name hijacking, as in MD On-line, Inc. v. Yenta Marketing, Inc., D2014-1468 (WIPO November 8, 2014) where the Panel held that “although Respondent may have registered the Domain Name innocently and without targeting Complainant and its common law mark, it has since used the Domain Name in bad faith.” This result here is based on the unclean hands theory, which is another critical factor in denying RDNH. That is, respondent should not be rewarded with a declaration and continue its bad faith use.
Bad faith use or at least the appearance of it is also a factor in Julie Wampler v. Name Administration, Inc., D2014-1586 (WIPO November 27, 2014). The Panel citing earlier authority reasoned that there were four essential elements in finding RDNH: 1) whether a panel has been deliberately misled (presumably by complainant, but it could also be respondent) , 2) whether a complainant should have known that it could not prove one of the essential elements required by the UDRP, 3) whether a complainant knew that the respondent used the disputed domain name as part of a bona fide business and 4) the superiority of the registration date of the disputed domain name measured against the complainant’s rights. However, the coda to this analysis is more compelling:
[Complainant’s] argument was not so completely void of merit, and it was not so obvious that the Complainant was misunderstanding the meaning of the pages it found through the “www.archive.org” website [that supported its contention that the domain name was being used in bad faith] … [or] that the Complainant … made a bad faith decision to go ahead with the Complaint.
Cases in which respondent registered the domain name before complainant’s acquisition of its trademark, where there is no possibility of proving bad faith registration, are not unusual and may suggest complainant is in the wrong forum; the question is not cybersquatting as defined under the UDRP but cybersquatting as defined under the Anticybersquatting Consumer Protection Act.