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No Consensus for Reverse Domain Name Hijacking

There is no consensus for reverse domain name hijacking; rather, there is a diversity of views about the conduct that would support it. Rule 15(e) authorizes the Panel “to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding … [i]f after considering the submissions the Panel finds that the complaint was brought in bad faith.” An element of bad faith is knowledge, either actual or in willful disregard of respondent’s right. There are two components to RDNH, either of which supports a declaration, namely abuse of the proceedings and harassment of respondent.

Some Panels decline to find RDNH unless the conduct is so flagrant it cannot be overlooked. ACE Limited v. WebMagic Ventures, LLC., FA080200 1143448 (Nat. Arb. Forum April 8, 2000) (“Complainant’s presentation and circumstances in this case does not rise to anywhere near the extraordinary level that is required for a finding of reverse domain name hijacking” (emphasis added)). At least one member of that very early Panel is no longer a subscriber to that view. Other Panels are not so hesitant, particularly where complainant is represented by counsel. PFIP, LLC v. Marco Jud, FA1408001577082 (Nat. Arb. Forum September 26, 2014). Pro se complainants are generally treated more leniently. LaFrance Corp. v. David Zhang, D2009-0415 (WIPO May 15, 2009) (“[h]ad Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding…).

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition records both views and an in-between in Paragraph 4.17 without identifying a consensus. View 1 Panels insist respondent has the onus of proving by more than simply a preponderance of evidence complainant acted in bad faith in commencing the proceeding. Thus,

To establish Reverse Domain Name Hijacking, a respondent would typically need to show [1] knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or [2] of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances (emphasis added)..

View 2 Panels turn “may be grounds for” into “are grounds to” declare RDNH even if respondent defaults in appearance. RDNH is most likely to constitute a basis for a finding of abuse of process where complainant

[1] in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; … [2] failed to notify the panel that the complaint was a refiling of an earlier decided complaint … or otherwise misled the panel; [3] [failed to appreciate that] a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; and [4] the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights ….

The PFIP decision illustrates an “abuse of the process” finding of RDNH even where Respondent defaults: “Complainant and its counsel are experienced participants in the UDRP process, and each independently should have recognized that Complainant’s claim was groundless.” And, also see IMB Textil S.A. v. Domain Administrator, Name Administration Inc. (BVI), D2014-1057 (WIPO September 5, 2014), a harassment finding: “At a minimum, [Complainant] could have verified how the disputed domain name was in fact being used. A properly advised complainant should also have taken steps to investigate the claim that the Respondent had been using the disputed domain name in an unobjectionable way ‘for a very long time.’”

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