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The Impact of "Reverse Domain Name Hijacking"

By Jay Hollander

Jay Hollander, Esq. is the principal of Hollander and Company LLC, www.hollanderco.com, a New York City law firm concentrating its efforts in the protection and development of property interests relating to real property, intellectual property and commercial interests, as well as related litigation.

The content of this article is intended to provide general information relating to its subject matter. Providing it does not establish any attorney-client relationship and does not constitute legal advice. Personal advice in the context of a mutually agreed attorney-client relationship should be sought about your specific circumstances.

Summary: "Reverse domain name hijacking" is a tactic used by a complainant in bad faith to attempt to deprive a registered domain-name holder of a domain name. A number of disputes under the Uniform Domain Name Dispute Resolution Policy have shown that this "bad faith" can arise under many circumstances, including when confusion is unlikely, when the complainant fails to disclose certain facts and when a domain name registrant has not used a domain name. This article explains these cases and how reverse domain name hijacking affects domain disputes.


Introduction to Domain Name Dispute Procedures

By now, everyone who follows legal issues relating to the Internet is intimately familiar with the concept of "cybersquatting," the practice of registering and using a well-known trademark in a domain name in bad faith either to keep it away from its rightful owner or to exact a profit from the owner in exchange for the return of the name.

Laws, such as the AntiCybersquatting Consumer Protection Act, allow trademark owners to use the courts for relief against cybersquatters, but court battles often prove long and expensive.

As a result, the Internet Corporation for Assigned Names and Number (ICANN), the quasi-governmental body assigned to establish rules of the road for the Internet, created a limited administrative remedy that allows trademark owners and others having rights in a disputed domain name to get their name back.

That remedy is contained in a procedure known as the Uniform Domain Name Dispute Resolution Policy (UDRP), a policy originally intended to be used as a cost-effective weapon against those who register domain names in violation of the rights of trademark holders or others having rights in a disputed domain name.

Under the policy, complainants must prove, among other things, that the current domain name registrant both registered and used the disputed domain name in "bad faith," and that the current registrant has no legitimate interest in the name.

Since its creation, the majority of the cases brought under the UDRP have resulted in victories for trademark holders and other complainants, sometimes even against the so-called "little guy" and sometimes against registrants who did not even make commercial use of the name.

But an increasing number of recent cases have relied on an underreported provision of the UDRP to highlight a growing trend that should make causal complainants less sanguine about their ability to win a UDRP proceeding just by showing up and claiming bad faith simply because they own a trademark. That trend, known as "reverse domain name hijacking," describes a practice in which trademark holders engage in a bad-faith attempt to use the UDRP to wrongfully strip the legitimate registrant and user of a desired domain name simply because the complainant holds a trademark in that name or one similar to it.

Understanding the concept of reverse domain name hijacking will be helpful if you see yourself as "David" against "Goliath" in a domain name dispute. However, without question, it's the complainant who especially needs to understand this concept, to avoid crossing the line that has been drawn and ruining its chances for relief under the UDRP and, possibly, other forums as well.

What Is Reverse Domain Name Hijacking?

According to UDRP Rule 1, the term "Reverse Domain Name Hijacking" means "using the Policy [the UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name."

According to Rule 15(e), panels finding such bad faith are not only empowered to deny the complaint, but they are directed to affirmatively find the presence of bad faith. In relevant part, the rule states:

    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.

As you can see, these rules don't really flesh out what qualifies as a "bad faith" complaint. So, to answer the question of what makes for a bad faith UDRP complaint and what facts justify a finding of reverse domain name hijacking, we need to look at some illustrations.

According to the recent rulings, reverse domain name hijacking occurs when a complaint is brought despite knowledge that the domain name holder has a right or legitimate interest in the domain name or that the name was registered in good faith, with or without the aggravating circumstance of harassment or proven bad intent by the complainant seeking to gain the name.

Here's how reverse domain name hijacking was defined in the ruling in Goldline International, Inc. v. Gold Line:

    To prevail on such a claim [of reverse domain name hijacking], Respondent must show that Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.

In that case, the complainant, Goldline International, was a business dealing in goods and services relating to coins and precious metals. The respondent, Gold Line Internet, was the business name for an individual who ran a consulting business specializing in intellectual property, including intellectual property arising from the use of vanity domain names and 800 telephone numbers.

The required "bad faith" registration and use of the domain name "goldline.com" was claimed by the complainant primarily because of a claimed likelihood of confusion with the complainant's name, even though the two businesses had nothing to do with each other and were unlikely to be confused with each other in actuality. Moreover, the panel found that the respondent had brought this, and other facts undermining the case, to the complainant's attention before the case was commenced.

In finding that the complainant had engaged in prohibited reverse domain name hijacking, the Goldline panel noted:

    Complainant's actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainant's mark was limited to a narrow field, and that Respondent's registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complaint, but also, Respondent put Complainant on express notice of these facts and that any further attempt to prosecute this matter would be abusive and would constitute reverse domain name "hijack[ing]".... Complainant's decision to file its Complaint in the face of those facts was in bad faith. Accordingly, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.

Even more important was the Goldline panel's adoption of a standard set down in Smart Design LLC v. Hughes, a case where the panel also found reverse domain name hijacking not because of established bad intent, but because the allegations of the respondent's bad faith were made in a manner that the panel concluded should have been obvious as insufficient to the complainant.

In Smart Design, the panel concluded that the complainant committed reverse domain name hijacking even though it did not explicitly find bad faith. The panel concluded that the complainant made allegations that the respondent acted in bad faith in reckless disregard of whether the facts underlying its claims supported that finding. As the panel found:

    The Panel is unable to assess the Complainant's state of mind when the Complaint was launched, but in the view of the Panel the Complaint should never have been launched. Had 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 other words, the standards exemplified by Smart Design and Goldline show that bad faith and a resulting finding of reverse domain name hijacking can be found not only in cases showing malicious intent, but also in cases where the panel subjectively concludes that the complainant brought a case that the panel retroactively concludes should have been obviously insufficient to the complainant.

If you think that this type of standard leaves a lot of room for interpretation, you're right. But it doesn't stop there.

Selective Disclosure

Other UDRP panels have gone even further and found bad faith based on their evaluation of whether a complainant bared all the relevant facts of a dispute within the four corners of the complaint.

A dispute over the domain name "armani.com" shows this point. The complainant was the registered proprietor of the trademarks ARMANI, GIORGIO ARMANI, and EMPORIO ARMANI, which it had registered in a large number of countries including the United Kingdom, the United States of America and Canada. The Rrspondent was a graphic artist and technical illustrator, whose full name is Anand Ramnath Mani, but who had been doing business under the name A.R.Mani for some time, according to the panel's findings.

The complainant's first offer to the respondent to purchase the name for $1,250 (Canadian) was met with a counter offer of $1,950.00 (U.S.) plus an assurance that complainant wouldn't oppose him in his registering "amani.com". The complainant didn't agree and, instead, filed a complaint under the UDRP, charging that Mr. Mani was a cybersquatter who had no rights to use its international trademark.

Apparently, the complainant did not choose to mention these failed negotiations in its complaint, but when Mr. Mani brought it up in his defense, it then tried to use it as "proof" of his bad faith. The panel strongly disagreed and instead found that the complainant was the one showing bad faith by bringing the complaint at all and by not being forthcoming with all the facts, an omission determined by the panel to have been at odds with the complainant's required UDRP certification that "the information contained in the Complaint is to the best of the Complainant's knowledge complete and accurate."

Non-Commercial of the Use

This apparent imposition on the complainant of the burden of not only making its case, but pointing out its own weak points as well, also came up in a proceeding involving an effort to recover a domain name from a registrant who claimed to intend to use it for personal or non-commercial purposes.

In Societe des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, the Nestle company sought to recover the "maggie.com" domain name for one of its subsidiaries. The respondent did not then have a website, but it claimed to have been developing one for personal use and for use of a family foundation.

Here, too, there had been failed negotiations that were omitted from the complaint, an omission to which the panel strongly objected:

    As a result of its rather lengthy dealings with Mr. Maggi, Complainant was aware that Mr. Maggi intended to use the Domain Name for personal use, yet Complainant ignores these negotiations in the Complainant and fails to even mention Respondent's alleged personal interest in the Domain Name.

As a result, the panel not only declined to grant the relief requested by Nestle, but it found the complainant to be in bad faith as well and guilty of reverse domain name hijacking.

What it All Means

What can be learned from the recent cases boils down to this: A proceeding under the UDRP isn't the way to determine complex trademark issues. It is a limited proceeding originally intended to be used in very limited circumstances and where there may be a backlash in the making against previous decisions that, in retrospect, seem too expansive in the extent to which they rewarded trademark holders.

Further, as the number of these complaints grows, the dependency of the panels upon the candor and comprehensiveness of the submissions has fueled a sense of righteous indignation when the panel concludes that the complainant has "held back" on the panel.

The growing number of panel decisions finding reverse domain name hijacking on the part of complainants means that this is a charge that will be more reflexively leveled by respondents in such proceedings. Since UDRP rules do not automatically allow for replies or rebuttals to a respondent's answer to a complaint -- this means that UDRP complaints will now have to be tailored differently to survive such charges. Some complaints may, in fact, no longer be brought in view of the emerging interpretations of the reverse domain name hijacking standard.

These cases reinforce the notion that the UDRP procedure was established to handle only a very limited type of case. It was specifically designed to prevent cybersquatting, not necessarily trademark infringement. It is now painfully clear that it is possible to have a valid trademark and yet fail in a cybersquatting action under the UDRP.

If you still feel you have a legitimate complaint, how should you integrate the lessons of the cases illustrated here?

Be polite and don't bully or harass the respondent, because that is a very quick way to be found a reverse hijacker, and don't be sneaky and withhold pertinent information from the arbitration panel. Your opponent is going to raise those facts anyway, and that may paint you as acting in bad faith. If the respondent offers to sell you the disputed name for a reasonable sum, accept it or refuse, as you wish, but don't thereafter bring a complaint under the UDRP, alleging bad faith on the respondent's part, because it's not likely to persuade the panel.

Remember that the burden of proof is on the complainant under the UDRP rules, so you must provide enough evidence to prove each and every element of your complaint.

Conclusion

Cybersquatting proceedings are still relatively new legal territory but, as the cases continue to proliferate, it is becoming more and more apparent what works and what doesn't. Judging from recent rulings, it's clear that in a UDRP action, you need to watch out for Rule 15(e) and evaluate with your attorney carefully -- before deciding to file a complaint -- whether you might be vulnerable to a countercharge of reverse domain name hijacking. Attempts to "bypass legitimate disputes over trademark rights" is not the way to win under the UDRP.

Copyright © Jay Hollander, 2007. All Rights Reserved.

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