02 Jul How Does Reverse Domain Name Hijacking Work?
This article was originally published on 5 August 2020 at domaintimes.info under the title ‘Everything you need to know about Reverse Domain Name Hijacking’.
Reverse Domain Name Hijacking (RDNH) occurs when a trademark holder uses the international Uniform Domain-Name Dispute-Resolution Policy (UDRP) to bully or harass the registrant of a domain name into transferring it.
The hijacker usually has little to no legal basis for their claim, or provides weak evidence. Under Paragraph 15(e) of the UDRP Rules, the Panel has the discretion to declare a complaint to be an abuse of the proceeding “if after considering the submissions the Panel finds that the complaint was brought in bad faith”.
Like all discretions given to courts and tribunals, the discretion must be exercised judicially. There is no hard and fast method of achieving or avoiding a finding of RDNH. In the WIPO Overview 3.0, the World Intellectual Property Organisation (WIPO) provide some guidance about what might constitute an abuse of proceedings. It lists factors such as whether the complainant knew or ought to have known it would not succeed, submitting incomplete or false evidence (or no evidence), or filing the complaint after attempting to purchase the domain but not being able to afford it. This last example has been commonly labelled a “Plan B” case and is not appreciated by Panelists, although outcomes depend on the facts of each case.
A recent example of this was the WIPO case of Cyarx Technologies Ltd. v. Taylor Robison (Case No. D2020-0595), in which an Israeli security company pursued a domain which had been registered years before the company was founded in 2015. They had also tried to negotiate a price with the Respondent in 2018, to no avail. The Panel found that their complaint clearly did not satisfy the UDRP requirements and handed down a finding of RDNH. Further commentary on this case can be found here.
Findings of RDNH are not purely cosmetic. In addition to receiving a scolding from the Panel, it is said that such a finding may harm the perception of future complaints and some involved in the field say it is damaging PR. There are also internet activists who maintain online databases of cases where RDNH has been found by panels.
Some jurisdictions penalise RDNH, and there is legislation the United States which enables a UDRP respondent to sue a complainant for damages. In one such case a respondent was awarded over $100,000, after the Complainant was found guilty of RDNH in an American court in 2011. But under UDRP procedures, no financial penalties are attached to RDNH.
Panelists will not penalise bona fide, good faith attempts at arbitration. This (as with all cases) requires good evidence, rather than unsubstantiated allegations. It is also important to understand the purpose of arbitration – it is not an arena in which one party can go after or hope to obtain a domain name it wants but was simply too late to register.
Max Slattery – Policy Officer, VSCL