What is Reverse Domain Name Hijacking?
Reverse Domain Name Hijacking (RDNH) is a finding that a UDRP panel can make if it determines that the complaint was brought in bad faith.
It is described in section 15(e) of the Rules for Uniform Domain Name Dispute Resolution Policy:
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.
UDRP panels have cited various factors when making a determination of RDNH. These include:
- The Disputed Domain was registered prior to any trademark use by the Complainant;
- The Complaint failed to provide any evidence that the Respondent was specifically targeting the Complainant in its registration and use of the Disputed Domain;
- The Complainant should have been aware that the Respondent had a legitimate right to the Disputed Domain;
- The Complaint is used as a Plan “B” option to acquire a domain after commercial negotiations have failed;
- The Complainant attempted to deceive the Respondent in communications that preceded the filing of the Complaint;
- The Complainant attempts to misrepresent material facts to the panel, or fails to disclose material facts.
Ironically, if a Complainant is successful in winning a decision to transfer to it a Disputed Domain in a UDRP, this can create a cause of action under the federal Anti-Cyber Squatting Protection Act (“ACPA”):
Trademark owners should be mindful that UDRP proceedings are not without their potential downsides, especially when a legitimate business (or, at least, an entity with the appearance of a legitimate business) is on the other side of a claim. It is also worthwhile to assess whether to proceed under the UDRP or the ACPA. UDRP proceedings are cheaper and faster, but difficult cases under the UDRP could, as they did here, lead to reverse domain name hijacking claims under the ACPA, snatching defeat out of the jaws of victory.
Source: Pattishall IP Blog
The relevant provision in the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1114(2)(D)(v) (“ACPA”) is,
A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) [the UDRP is such a Policy] may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this Act. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
Domain owners have successfully won damage awards in federal lawsuits under the ACPA in which the domain owner claimed that it was the victim of reverse domain name hijacking. For example, the City of Paris was ordered to pay $100,000 as a result of a RDNH finding for parvi.org, and GoForIt Entertainment was ordered to pay $100,000 as a result of its RDNH attempt against Scott Day’s Digimedia.com LP.
The owner of the MyArt.com domain name lost a UDRP on the domain. The domain owner then filed suit in Federal Court under the ACPA claiming that the UDRP Complaint was Reverse Domain Name Hijacking. The domain owner succeeding in obtaining an offer of judgment and monetary damages. Articles at ILAWCO.com and TheDomains.com.
A finding of Reverse Domain Name Hijacking may also be the basis for bringing a cause of action at the US Patent and Trademark Office to cancel the trademark rights of the company that is asserting rights to the disputed domain under a provision that states that trademark rights may be cancelled if they are misused.