We have witnessed many RDNH findings in recent UDRP decisions, that merit reminding when such findings are reached and how to avoid these.
Reverse Domain Name Hijacking: an Overview
The system itself is not immune from abuse and trademark owners might be found guilty of reverse domain name hijacking (RDNH).
According to the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) reverse domain name hijacking means using the Policy in bad faith in an attempt to deprive a registered domain-name holder of a DN.
The Rules also provide that, 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.
There are therefore two situations where a finding of RDNH might be reached:
- The complaint was filed in bad faith, for example by lying,
- The complaint was filed to harass a DN owner.
Merely losing a UDRP case does not lead to a finding of RDNH. This might be the case where there are genuinely disputed facts or unknown facts to the complainant that trigger the rejection of the complaint.
However, if a complaint is filed and the complainant knows is baseless or that it would not be able to prove it, the filing of the complaint may amount to bad faith and/or harassment. RDNH could also be found in those cases where it is clear that the complaint does not meet the UDRP requirements, and the complainant should have known that it could not succeed. Complainants represented by counsel are normally held by a higher standard.
RDNH and being commonly known by the DN
One of the circumstances under the Policy that may demonstrate the respondent’s rights or legitimate interests in a DN is if the respondent has been commonly known by the disputed DN.
In the recent WIPO case concerning the DN <machani.com>, the panel decided that the complaint was brought in bad faith on the second element, as the respondent proved with the response that it had been commonly known by the DN and the complainant filed a supplemental filing instead of withdrawing the complaint. The panel found that:
“[..] the publicly-available WhoIs records for the disputed domain name available at the time of filing of the Complaint indeed did not show that “Machani” was the family name of the Respondent, and there was no active website at the disputed domain name. However, the fact that the family name of the Respondent was “Machani” was stated in the Response and was substantiated with convincing evidence. […]
However, having received the Response, rather than withdrawing the Complaint, the Complainant attempted to submit a supplemental filing which did not dispute the evidence about the family name of the Respondent, but started with the statement that “The Respondent has not disputed or denied any of the submissions and contentions made in the complaint and is, therefore, deemed to have accepted the submissions and contentions made in the complaint”.
RDNH and demonstrable preparations to use the DN
Another circumstance under the Policy that may demonstrate the respondent’s rights or legitimate interests in a DN is if the respondent used the DN or a name corresponding to the DN in connection with a bona fide offering of goods or services.
In the WIPO case D2021-1333 concerning the domain name <wwtm.org>, the panel found that the complainant engaged in RDNH. It held that with respect to the second element, the complainant argued that there is nothing on the website at which the disputed DN redirected that can confer rights to the respondent.
However, the panel found that, even on a cursory review of the respondent’s website, it was apparent that the disputed DN is an acronym for the name used by the respondent in its activities. The parties also exchanged communication where the respondent specifically pointed the complainant to its website.
The panel concluded that:
“the Complainant had no reasonable basis to assert in the Complaint that nothing on the Respondent’s website suggests any proper use for adopting the WWTM name.”
RDNH and priorly registered domain names
Under the third element of the Policy, a complainant must prove that the disputed DN was registered and is being used in bad faith. The requirements are conjunctive; hence no bad faith is normally found where the trademark relied on by the complainant postdates the DN in dispute.
If the complainant had no trademark at the registration of the DN, it would be difficult to prove that the respondent targeted the complainant’s trademark and business.
As an exception, bad faith registration might be found if the respondent’s intent was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights (e.g. WIPO Overview 3.0, section 3.8).
Recent examples include the WIPO case D2021-0528 concerning the DN <levio.com>, where the panel has held the complainant guilty of RDNH considering inter alia that:
“the Complainant should have taken into account that the Respondent has been the owner of the disputed domain name for a long period of time, which started years before the registration of the Complainant and of the LEVIO trademark, and that there is an established Policy precedent that where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
Similar decisions in the WIPO cases D2021-0675 concerning the DN <damstra.com> (where the complainant was also held to have tried to mislead the panel on the facts of the case), D2021-1420, concerning the DN <koibox.com>, D2021-1219 concerning the DN <energysquare.com>, D2021-0886, concerning the DN <reboxed.com>.
In the WIPO case D2021-0899, concerning the DN <ketolean.com>, the panel also considered the finding to be aggravated by the fact that the complainant was represented:
“In particular, the Complainant’s failure to appreciate the established Policy precedent relating to post-dating trademark rights as fully articulated in section 3.8 of the WIPO Overview 3.0, and in multiple cases under the Policy, is all the more concerning given that it is represented by professional advisers.”
Particular facts of a case might not support a finding of RDNH even if the DN predated the trademark of a complainant, as in the WIPO Case D2021-1354 concerning the DN <testbusters.com>.
RDNH and descriptive terms
RDNH might also be found in cases where the complainant is not able to prove that the respondent has registered the DN to target the complainant, for example where the DN was registered for its inherent value as a DN incorporating a common descriptive term.
In a recent case involving the domain name <citycentre.com>, the panel has held that:
“the Complainant’s case is based on the argument that using a common/descriptive domain name in connection with a pay-per-click website and offering it for sale to the highest bidder, independently of any awareness of the Complainant, is of itself evidence of bad faith. The Panel finds that the Complainant should have known that it could not succeed with such an argument. Indeed, the Complainant appears to unreasonably ignore Policy precedents, not to mention the panel’s holding in Majid Al Futtaim Properties LLC v. Solidere, supra, that “The expression ‘city centre’ is plainly a descriptive term which can have an extremely wide range of references that have nothing to do with the Complainant.”
A recent example in a similar situation, in the WIPO case D2021-1861 concerning the DN <lerins.com>.
Another example in the WIPO Case DAU2021-0014 concerning the domain name <affirm.com.au> that was widely discussed for the complainant being represented by international reputed counsel, that the panel held to have ignored that its client cannot succeed in its claim in the circumstances of the case.
Keeping relevant information from the panel
In a recent decision in the WIPO case DEU2021-0008 concerning the DN <kinetiksports.eu>, the panel decided that the complainant failed to establish the second element as the respondent proved its long use of the trademark in dispute and that it has registered various trademarks incorporating that term.
An important factor was the fact that the complainant omitted any reference in its complaint to such factual elements and treated the respondent as if it was an entirely unrelated competitor that had misappropriated the complainant’s trademark. For the same reasons, the panel considered that the third element was not established.
Moreover, the panel decided that the complaint was brought in bad faith as:
“By leaving out these crucial background details, the Complaint gave the misleading impression that the Respondent was an unrelated competitor who had egregiously sought to impersonate the Complainant by misappropriating its “Kinetik” name and logo. If the Respondent had not filed a Response, an injustice might have been done.”
In a similar case concerning the domain name <damstra.com>, the panel has held that the complainant was guilty of RDNH:
“Furthermore, the Panel also finds that the Complainant (or rather, its professional representative) has either been extremely careless, or has tried to mislead the Panel by 1) suggesting that the Domain Name was not being used at all, 2) not disclosing accurately the status of the United States trademark application and 3) not disclosing that the Complainant sought to purchase the Domain Name rather than the Respondent offering the Domain Name for out-of-pocket expenses.”
A similar decision in WIPO case D2021-1757 concerning the DN <pumaexports.com>, where the complainant was found guilty of RDNH for submitting incorrect and misleading statements and also for making serious allegations of dishonesty or fraud that were unsupported or exaggerated.
Leaving aside intentional cases, where complainants would file an abusive UDRP claim irrespective of the risk of being held guilty of RDNH (with only reputation damage as sanction so far), such finding could be avoided if the Policy precedents are followed.
As explained in an earlier post, UDRP operates in an international sphere and a set of transnational general principles has been developed to address these disputes.
While it is true that each case will depend on a unique set of facts and legal arguments raised by the parties, the body of UDRP jurisprudence is well developed and should be followed to avoid findings of bad faith filing.
In case of UDRP disputes solved under the WIPO auspices, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as updated, is a useful tool when assessing the merits of a case before filing.
Examples of recent cases where the complainant lost a UDRP case, but was not found guilty of RDNH, include the WIPO case D2021-0630, concerning the DN <pachagroup.com>, where the respondent proved it had been legitimately using the DN for its corporate email addresses. The panel made clear that as a firm whose only business activity is acquiring and holding shares of stock in other companies, for the benefit of its owners, the respondent has no need for a brand or a website. For this reason and noting that the filing of the complaint was largely the product of “a misunderstanding of a basic fact, namely, that one need not be a business with a trademark in order to enjoy the legitimate possession of a domain name”, despite rejecting the complaint, the panel declined to make a finding of RDNH.
Similarly, in WIPO case D2021-1412, concerning the DN <culers.com>, the complainant failed to prove the third element. However, the request for RDNH was denied as:
“The Panel finds that the Complainant’s conduct during this proceeding is not uncommon, and the Complainant evidently and understandably wanted to add the “.com” extension of its domain names comprising its trademark CULER, being conscious that the disputed domain name is inactive and, at the time of filing the Complaint, linked to a parked website including PPC links. The facts that the Complainant’s registration for the mark CULER is recent (2020) or that the Complainant did not claim the disputed domain name before do not imply bad faith. Furthermore, trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of.”
Also, in the WIPO Case D2021-1084, concerning the DN <taatas.com>, the complainant failed to prove the second element, as inter alia there was evidence on the record that the Respondent has made demonstrable preparations and was in fact using the disputed DN in connection with a bona fide offering of goods or services. However, the panel dismissed the request for RDNH as even if the complainant was represented by counsel and the complaint contained little addressing the actual use that the respondent was making of the DN, the panel was not persuaded that the defects in the Complaint sink to the level of bad faith. The panel held that “[t]he Complainant, a famous brand and moreover based in a jurisdiction close to that of the Respondent, appears to have genuinely believed that it had a case.” Similar examples in the WIPO cases D2021-1572, concerning the DN <abreco.com> and D2021-1550, concerning the DN <foreveriam.com>.