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Revisiting Reverse Domain Name Hijacking

The conduct that reverse domain name hijacking (RDNH) was crafted to punish is “using the [Uniform Domain Name Dispute Resolution Policy] in bad faith to attempt to deprive a registered domain-name holder of a domain name.” There are several variations ranging from the plain vanilla, claims that should never have been brought—mark owners whose rights postdate the registration of the challenged domain name as in Vudu, Inc. v. WhoisGuard, Inc. / K Blacklock, D2019-2247 (WIPO November 15, 2019) (<vudo.com> in which the Panel castigates Complainant for not recognizing “that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come”)—to the more exotic—mark owners who not only inflate their histories but downplay or omit any negative evidence as in Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien, D2019-0455 (WIPO April 16, 2019) (<incanto.com>:

This does seem to be a “Plan B” filing, after the Complainant recently tried without success to purchase the Domain Name from the Respondent some 16 years after the Respondent added the Domain Name to his portfolio. The Complaint made sweeping assertions about the Complainant’s business and trademark rights and recognition that simply did not match the facts in 2003 when the Domain Name was registered and offered little or no evidence to support its claims for the “worldwide” fame of the trademarks in 2003.

In between are complainants who “grossly exaggerate” their claims for weak marks as in Sarah Lonsdale & Stuart Clark t/a RocknCrystals v. Domain Admin / This Domain is For Sale, HugeDomains.com, D2019-1584 (WIPO September 6, 2019) (<rockncrystals.com>. “The Complainant’s goal in attributing to the Respondent the intention to ‘kill’ their business was evidently aimed at creating the impression of deliberate targeted wrongdoing, when in fact there was no evidence to support this sort of characterization.” There are also complainants who believe that asking prices are ridiculously inflated only to learn it is not they to appraise but for the respondent to value its asset.

In the first full year of the UDRP panelists were cautious (almost reluctant) to find RDNH, most likely attributable to the lack of clarity as to what constituted sanctionable conduct. As the jurisprudence of domain names has advanced, so has the consensus as to what constitutes RDNH; reluctance has markedly diminished; and Panels have become less tolerant of complainants (particularly those represented by counsel) for failing to appreciate the evidentiary demands or are unfamiliar with the practices of the UDRP. This shift is illustrated in a number of recent cases, but also in progressive editions of Overviews of Panel Views published by the World Intellectual Property Organization (WIPO). As WIPO has done with other areas of the jurisprudence, its editors have reduced Panel decisions to concise restatements of the consensus view on the core principles. The 1st Edition (2005) did not include a section on RDNH, but the subject was covered in the 2nd Edition (2011) and edited for greater clarity in the 3rd (2017) Edition.

Since statistics are more easily retrievable from WIPO than from the other service providers I will use them to make my point that as RDNH has been more crisply defined so have the number of RDNHs risen relative to the number of requests. The year 2000 was notable in that more complaints were denied (dismissed) than in any subsequent year although between then and now there has been a steady rise in the number of disputes. In 2000 1443 claims went the distance to award of which 262 were denied (17.8%); 1181 domain names were either transferred or cancelled (82.2%). There were twenty-one requests for RDNH, 18 of which were rejected or not considered (86%) for reasons that today appear thin.

Between 2000 and 2019 (with some dips) there has been a steady annual increase in the number of complaints and cybersquatting awards. While the number of denials has decreased (likely owing to increased understanding of what is required to prove cybersquatting), within that class the number of RDNHs has risen owing to the greater clarity coming from the reasoned decisions. In 2019 (through the date of this essay) there has been approximately 2250 disputes that have gone to award (out of approximately 2880 complaints filed) of which there were approximately 161 denials (7.2%), Of those denials there were 84 requests for RDNH of which Panels granted 34 (40.5%).

If the number of filings in 2019 continue at the same monthly rate, this year is likely to surpass 2018 (3411 cases). My rough calculation is that the other major provider of UDRP services, the Forum, is generally in the same range of numbers and percentages and is equally reflective in RDNH decisions, but my focus here will be on WIPO decisions. For the big picture, though, the numbers should be doubled.

One explanation for numerous RDNH rejections in 2000 was the uncertainty of definition, which in an emerging jurisprudence takes time to develop. Some of the explanations for rejecting RDNH sound thin to 2019 ears: “Complainant may have been ill-advised to have acted as it has done [but] it would seem that the Complainant genuinely believed … [it had] rights in the name YOUR MOVE in relation to its estate agency business.” CGU Insurance plc v. Irving Remocker, D2000-1515 (WIPO February 19, 2001); or, in another case, Decision Analyst, Inc. v. Doug C. Dohring, D2000-1630 (WIPO February 6, 2001) <opinion surveys.com>) where it appeared the Panel was heading in the RDNH direction but veered, noting that

allegations of bad faith are so conclusory that they appear to lack any merit. The Complaint thus borders on Reverse Domain Name Hijacking, but given that the Respondent did not request such a finding, the Panel will refrain from reaching that conclusion sua sponte.

Some of this reluctance continues with unrepresented complainants who are obviously attempting through the UDRP to “deprive the registered domain name holder” of its domain name.” WIPO Overview 3.0 states that “some panels have held that a represented complainant should be held to a higher standard.” This view began emerging later in 2000. I’ll return to current decisions in a moment.

The first RDNH was imposed in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000). The Panel held that “[h]ad the Complainant sat back and reflected upon what it was proposing to argue, it would have seen that its claims could not conceivably succeed.”) In another case, Teranet Land Information Services Inc. v. Verio, Inc., D2000-1123 (WIPO January 25, 2001) (<teranet.com>, a member of a three-member Panel in a concurring opinion disagreed with the majority for not awarding RDNH with the impeccable reasoning that since domain name challenges are “relatively easy and inexpensive … [i]t is, therefore, absolutely essential for panelists to ensure that it be carefully restricted to cases of abusive, bad faith registration.” “In particular [the member continued] we must not allow it to be used by complainants to seek control of names that happened to be registered by someone else first.” For him,

[a]ll [he saw was] an attempt to lower the price of acquiring the domain name by substituting adjudication for market transactions. That is an abuse of the UDRP and should be recognized as such” (emphasis added).

The further (initial) question was whether panelists had discretion to award RDNH if it was not requested. In Fabricas Agrupadas de Muñecas de Onil S.A. (FAMOSA) v. Gord Palameta, D2000-1689 (WIPO March 14, 2001) (<famosa.com>) the Panel denied RDNH because “such an exceptional determination was not clearly requested by Respondent.” This view was overtaken by later Panels who questioned why this should be. In Goway Travel Limited v. Tourism Australia, D2006-0344 (WIPO June 6, 2006), to take one example, the Panel held that the “Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.’”

A further clarifying definition was articulated in Andrew Etemadi, Founder and Chief Technology Officer for Eyemagine Technology LLC v. Clough Construction and Deanne Clough, D2012-2455 (WIPO February 14, 2013) in which the Panel noted that “[i]t is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.” The sanctioned Complainant in Vudu (a 2019 case mentioned above) “insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name.”

The “problem” in many of these cases from the beginning revolves around resellers of domain names. Some panelists were of the view that speculation violated the UDRP, but that view was quickly overtaken with the view that it was defensible if the domain names were composed of dictionary words usable generally without violating third-party rights under Paragraph 4(c)(i) of the Policy. The concept is captured in Advice Group S.P.A. v. Privacy Administrator, Anonymize, Inc. / Michele Dinoia, Macrosten LTD, D2019-2441 (WIPO December 2, 2019) (<advicegroup.com> in which the Panel, noting that Complainant “inappropriately relies on accusations of “cybersquatting”, pointed out that

[t]he Domain Name is a common English two-word term, and the Complainant offered absolutely no evidence to indicate that the Respondent had advance knowledge of the Complainant’s trademark plans and no reason to believe the Domain Name would ultimately be more valuable in relation to the Complainant, once those plans came to fruition, than for its generic sense.

Also in Armor v. Ozguc Bayraktar, Rs Danismanlik, D2019-1803 (WIPO September 17, 2019) (<kimya.com> [a generic Turkish word meaning “chemistry” in English] which earned Complainant a RDNH. In Religare Health Insurance Company Limited v. Name Administration Inc. / Domain Administrator. D2019-2073 (WIPO November 29, 2019) (<carehealthinsurance.com> the Panel characterized the case as “I have a mark, you don’t, pay-per-click is involved, and therefore I’m entitled to your domain.” In fact, “[t]he Complaint thus fails on its face and would have failed in the absence of a response.”

A significant factor noted in WIPO Overview 3.0, and discussed in Religare Health Insurance Company, is Certification (Rules 3(b)(xiii):

That certification requires at least minimal due diligence into both the factual background justifying [or not] charges of illegitimate use and bad faith and into basic Policy precedent on matters pertinent to such facts. A quick Internet search and a careful reading of the WIPO Overview 3.0 would have shown the Complainant or its representative that there was no case here. If the Rule is to be more than the rote recital it is in the Complaint, I believe the Rule requires that at the very least.”

Finally, there is the question of unrepresented complainants; should they be given a free pass? Panelists were reluctant in 2000 and they continue to be. The Panel in Sébastien Paches v. Dvlpmnt Marketing, Inc., D2019-0742 (WIPO May 19, 2019) (<paches.com>) has no hesitation in other recent cases to sanction represented complainants, but not unrepresented. The Panel declined to issue the sanction even though there was “some evidence suggesting this is a situation whereby the Complainant has failed to buy the Disputed Domain Name at a price he was prepared to pay, and then adopted an alternative strategy of an unmeritorious Complaint.” But, “[since] the Complainant is not represented[,] and it seems to the Panel that on balance he has simply failed to properly understand the Policy rather than acted deliberately in bad faith … [his] conduct does not fall within the above guidelines and does not deserve the censure of a finding of RDNH.”

Nevertheless, a 40.5% rate of RDNH in 2019 (as against 14% in 2000) demonstrates a greater willingness, a lessening of reluctance to give respondents some non-monetary but compensatory comfort in having to defend abusive complaints. Why this should not apply to unrepresented complainants is odd; a sympathy vote, not an objective finding. However, this willingness to call mark owners out is likely to continue because of the greater clarity in defining what constitutes RDNH and adhering to consensus as formulated in WIPO Overview 3.0. It is also likely to continue for a reason I mention above, that there is a class of mark owners and counsel who are simply unfamiliar with the law and assume that ownership of a mark is tantamount to a preclusive right.

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, 2nd Edition 2019). The treatise is available on Amazon and Barnes & Noble.  If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting inquiries@legal cornerpress.com or gmlevine@researchtheworld.com. The discount will not be available from Amazon and Barnes & Noble.

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  1. A look at the history of Reverse Domain Name Hijacking – Domain Observer - January 9, 2020

    […] in a UDRP complaint, though there was no finding of reverse domain name hijacking. There is an article published by Gerald M. Levine a few weeks back at IPlegalCorner.com that’s worth […]

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