Domain Hijacking

Domain hijacking is also called RDNH or reverse domain name hijacking

Domain hijacking happens when someone files a UDRP complaint or a court action in bad faith to get a domain name from its registered owner. A domain hijacking complaint is often called a plan B complaint. A classic plan B complaint to secure a domain name happens after the complainant was unable or unwilling to negotiate the purchase of a domain name.

Plan B Domain Name Cases

Plan B (noun): a strategy or plan to be implemented if the original one proves impracticable or unsuccessful.
http://www.dictionary.com/browse/plan-b?s=t

 wrote, When a Domain Name Dispute is ‘Plan B’:

The label appears to have first been used in the context of domain name disputes in two decisions from 2007, one involving <michelman.com>, the other <giggles.com> and <giggles.org>.

In the <michelman.com> case, the panel described Plan B like this: “Complainant commenced this proceeding as an alternative (‘Plan B’) to acquire the disputed domain name after being rebuffed in the anonymous auction process.”

Through the years, the “Plan B” terminology has been invoked in about 50 cases, nearly all of which resulted in decisions allowing the current registrants to keep the disputed domain names.

The panel in the <queen.com> proceeding called it “a classic ‘Plan B’ case where a party, having been frustrated in its negotiations to buy a domain name, resorts to the ultimate option of a highly contrived and artificial claim not supported by any evidence or the plain wording of the UDRP.”

https://giga.law/blog/2017/8/2/domain-name-dispute-plan-b

Strategies for Avoiding or Dealing with a UDRP:

  1. Before you get hit with a UDRP, build out a website on your domain name and register a trademark that matches your domain name.
  2. Respond to a UDRP with affidavits and a copy of your trademark registration. A domain hijacking will usually happen if you don’t respond to a UDRP complaint.
  3. Hire a lawyer who is a domain name specialist right away, to help ensure that you file a winning response along with sworn evidence to support your assertions. Visit WIPO’s website for UDRP Model Response and Filing Guidelines.
  4. If you get served with a UDRP complaint via email, you have 20 days to respond. During those 20 days, you may email the dispute resolution provider handling your complaint to ask for an extra 5-day extension, or more if you have extra-ordinary circumstances. Sometimes a panelist will review and accept your response, even if it is a little late, but don’t bank on it.

In some clear cases of domain hijacking:

  • The registrant has a trademark or other intellectual property rights in the name;
  • The domain name was registered before the complainant had registered its trademark rights in words matching the domain name;
  • The domain name is the name of a geographic place that existed before the Complainant registered its trademark;
  • The domain name is a generic word or phrase used in good faith;
  • The domain name is legal or nickname of the registrant;
  • The domain name is being used in a lawful noncommercial or fair use of the mark in a website under the domain name;
  • The registrant’s prior use of the domain name in connection with the good faith offering of goods and services; or
  • The domain name owner has legitimate rights in the domain name.

According to the legislative history of the Anti-Cybersquatting Piracy Act, the defendant will have the burden of introducing evidence of lawful use.

Note that while the UDRP provides a defense if the domain name registrant has made demonstrable preparations to use the domain name in a bona fide offering of goods or services, the legislation only provides a defense if there is prior use – not simply preparation to use.

If domain name owner asks a UDRP panel to rule that the Complaint represents an attempt at Reverse Domain Name Hijacking (“RDNH”) its domain name, they should do so. Domain Name Hijacking is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the Rules provides as follows:

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.

https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

Other circumstances for finding RDNH articulated by panels for finding RDNH include:

(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,

(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database,

(iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,

(iv) the provision of false evidence, or otherwise attempting to mislead the panel,

(v) the provision of intentionally incomplete material evidence – often clarified by the respondent,

(vi) the complainant’s failure to disclose that a case is a UDRP refiling,

(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis,

(viii) basing a complaint on only the barest of allegations without any supporting evidence.

http://www.wipo.int/amc/en/domains/search/overview3.0/#item416

Does getting a trademark, that matches a domain name, increase my negotiation power when attempting to buy that domain?

Question: I’d like to buy a domain name from its current owner, but their asking price is somewhat high (low-mid 5 digits figure) and they don’t want to negotiate. I was wondering if getting a trademark in the domain name’s country (which I have to get anyway) would increase my price-negotiating power.

Answer: No, filing a UDRP based on a trademark obtained after a matching domain name was originally registered will cost you a lot of money.

A US judge may award $100,000+ for the reverse domain name hijacking claim in federal court under the Anti-Cybersquatting Piracy Act (ACPA) Lanham Act S. 43(d), 15 U.S.C. S.1125(d).

In the Walter v. Ville de Paris Memorandum in support of Default Judgment, filed in the TX SD US Court, the Plaintiff argued the following:

By way of reference, 15 U.S.C. § 1117(d) authorizes, in cases “involving a violation
of section 1125,” an election of damages in the courts discretion of “not less than $1,000 and not
more than $100,000 per domain name, as the court considers just.”  This is a case “involving” a
violation of 1125(d)(1) in that Mr. Walter is seeking a determination that it was not violated.

A CDRP panel may award $5000 as a reverse domain name hijacking penalty – RDNH, if the CDRP complaint is over a .ca domain.

Bad Faith Complaints

WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent. The mere lack of success of a complaint is not itself sufficient reason to make a finding of Reverse Domain Name Hijacking.

The ins and outs of Cybersquatting UDRP cases and reverse domain name hijacking

Learn about the ins and outs of Cybersquatting UDRP cases and reverse domain name hijacking in this DNW interview with Jason Schaeffer:

How can you defend yourself against claims of cybersquatting, and what’s Reverse Domain Name Hijacking? Jason Schaeffer and his firm ESQwire.com have won lots of reverse domain name hijacking cases on behalf of clients, and he gives the details on the DNW show.

Jason Schaeffer explains that a generic domain name such as tirestore.com and you are selling tires, then you have a

Legitimate interests under section 4(a)(2):

 

Establishing Reverse Domain Name Hijacking

To establish Reverse Domain Name Hijacking, a panelist would typically need to find that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Examples of indicia of a complainant’s bad faith:

  • The Complainant’s knowledge of its lack of relevant trademark rights;
  • The Complainant’s knowledge of the domain name owner’s rights or legitimate interests in the domain name;
  • The Complainant fails to mention that it initiated inquiries about buying the domain name, instead implying that the offer for sale was unsolicited;
  • The Complainant brought the Complaint primarily to harass the domain-name holder;
  • The complainant filed a UDRP after failing to acquire the domain name through purchase negotiations “classic Plan B case;” or
  • The domain name owner’s lack of bad faith concerning the disputed domain name.

Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.

WIPO panels have found Reverse Domain Name Hijacking in circumstances including where:

  • the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP;
  • the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel;
  • a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith;
  • the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].

The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.

WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where:
  • the complainant has succeeded in establishing each of the three essential elements required under the UDRP;
  • the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint;
  • there is a question of clean hands or factual accuracy on the part of both parties;
  • the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or
  • there appears to be another relevant factual basis for filing the complaint.

Domain Hijacking Relevant decisions:

airzone.com: Corporacion Empresarial Altra S.L. v. Telepathy, Inc., WIPO Case No. D2017-0178, Denial (Domain hijacking: RDNH found)

  • Note: Telepathy, Inc. filed suit under the ACPA for damages

carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, <carsales.com>, Denial (Domain hijacking: RDNH found)

hakoba.com RDNH:Hakoba Lifestyle Limited v. Mukesh Shah, WIPO Case No. D2017-0675 (Domain hijacking: RDNH found)

Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081, <nativestyles.net> inter alia, Denial (RDNH denied)
Goway Travel Limited v. Tourism Australia
, WIPO Case No. D2006-0344, <downunder.travel>, Denial (Domain hijacking: RDNH found)
Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM
, WIPO Case No. D2006-0905, <proto.com>, Denial (Domain hijacking: RDNH found)
Mondial Assistance S.A.S. v. Compana LLC
, WIPO Case No. D2007-0965, <mondial.com>, Denial (RDNH denied)
Grasso’s Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co
, WIPO Case No. D2009-0115, <grasso.com>, Denial (RDNH denied)
Compart AG v. Compart.com / Vertical Axis, Inc
., WIPO Case No. D2009-0462, <compart.com>, Denial (RDNH denied)
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom
, WIPO Case No. D2009-0540, <長江.com>, Denial (Domain hijacking: RDNH found)
Ville de Paris v. Salient Properties LLC
, WIPO Case No. D2009-1279, <wifiparis.com>, Denial (RDNH denied)
M. Corentin Benoit Thiercelin v. CyberDeal, Inc.
, WIPO Case No. D2010-0941, <virtualexpo.com>, Denial (Domain hijacking: RDNH found)

X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519 <xpand.com>, Denial (Domain hijacking: RDNH found)

  • Attempted reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.
  • It is the common view among UDRP panelists that when a domain name is registered before a trademark right is established, the registration of the disputed domain name was generally not in bad faith because the registrant could not have contemplated the complainant’s non-existent right (cf. Question 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; John Ode d/b/a ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182).
  • There are certain exceptions to this rule, however, circumstances justifying an exception have not been brought to the Panel’s attention on the record of this case and are hardly conceivable given the fact that the registration of the disputed domain name precedes the Respondent’s use of its XpanD Mark by more than three years.

Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297;

Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., WIPO Case No. D2004-0158).

Some recent UDRP decisions finding domain hijacking are:

Buying and selling domain names is not per se bad faith

alsa.com WIPO UDRP Case No. D2005-0282

  • Buying and selling domain names is not per se bad faith absent an intent to exploit the value of the complainant’s mark. Automóviles de Luarca, S.A. v. NUCOM, Domain Name BrokersWIPO Case No. D2005-0282.
  • The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001). Cited in:

Domain name is the Geographic place in the world:

Develi.com WIPO UDRP Case No. D2014-1367

  • More importantly, however, the Panel is concerned by the Complainant’s critical failure to address either in the Complaint or in its supplemental filing the fact that the name “Develi” holds a non-trademark meaning arising from the eponymous city. Instead, the Complainant attempts to rely upon bare averments that it is well-known, vague assertions as to the reach and extent of its restaurant chain with no supporting evidence and an unfounded submission that the Respondent is Turkish.
  • Domain hijacking:

In all of these circumstances, the Panel finds that on balance the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Domain name is a generic term:

dataminer.com WIPO UDRP Case No. D2016-1667

  • Respondent wouldn’t sell the disputed domain name to the Complainant at the Complainant’s preferred price. The latter basis is a matter for the marketplace, as even the Complainant acknowledges that it and not the Respondent initiated the inquiries to buy the disputed domain name. The former stands entirely on the Complainant’s characterization of the Respondent’s business as “cybersquatting” without pleading (much less proving) one instance in which a court or UDRP panel found that to be so. In fact the almost uniform view present in UDRP decisions is that buying and selling domain names is not per se bad faith4 absent an intent to exploit the value of the complainant’s mark.

Soda LLC v. SIMPLEDOLLAR.COM WIPO Case No. D2016-0038

  • Respondent further contends that the boilerplate allegations of Complainant are insufficient to meet its burden. Complainant’s own evidence demonstrates that the Domain Name was registered nearly 16 years before the Complaint was filed; the Domain Name consists of two generic terms (“simple” and “dollar”); and Respondent registered the Domain Name years before Complainant could possibly have acquired rights.
  • Respondent registered the Domain Name consisting of two descriptive words six years prior to Complainant’s earliest use of its unregistered THE SIMPLE DOLLAR mark”

Domain name is a given name and a surname

bernette.com WIPO UDRP Case No. D2016-1811

The Panel considers that the Complainant has been guilty of RDNH for the following reasons:

1. The Complainant has failed by a large margin. In the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. For example, it is a well-settled Policy precedent that some proof of targeting (i.e., using the disputed domain name to take advantage of the Complainant’s marks in whatever manner) is required to establish bad faith. As explained above, there was no such evidence in this case. Furthermore, the Complainant relied heavily on the mere fact that the Respondent trafficked in domain names, whereas it is again well-established under the Policy that such activity of itself may well be entirely legitimate, depending on the circumstances.

2. The Complaint lacks candour. In particular:

a. The Complainant relies on a “proposed sale price of US$ 29,000” and exhibits various broker communications in August 2016 putting forward this price. But its submissions are misleading because it nowhere provides details of the sales enquiries on behalf of (though not in the name of) the Complainant which prompted such offers or even mentions that the Respondent’s offers were solicited. Nor does the Complainant refer to its earlier offers in 2010 or 2015. The Panel would add that the Respondent’s account of the relevant purchase enquiry history is also somewhat incomplete.

b. The Complainant’s description of the Respondent’s business structure is highly inaccurate. The Complainant is represented by counsel, who ought to know better and who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint. The Panel sees no excuse for not recognising Frank Schilling and his businesses, which have been involved in many previous UDRP cases or, if not familiar with them, doing a basic Internet search.

3. In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (holding “Plan B” approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., WIPO Case No. D2015-0202 (use of UDRP proceeding to increase bargaining leverage in sale negotiations called “a highly improper purpose”).

4. Many of the above points were specifically drawn to the Complainant’s attention in the Respondent’s pre-action letter, mentioned in section 4 above. This should have given the Complainant serious pause for thought but it ploughed on regardless.

Domain name was registered before the Complainant had Trademark Rights

croma.com WIPO UDRP Case No. D2013-1360: Infiniti Retail Limited v. John Cromwell / Croma Web Services

  • the Panel finds as a fact that the Respondent registered the disputed domain name approximately ten years prior to the Complainant’s commencement of its business in India. Even had the Complainant’s submission been correct that the disputed domain name was registered in 2001, this would still have pre-dated the Complainant’s business start-up and the registration of its marks by many years. As a result the Panel finds it impossible that the Respondent, operating in the United States could have registered the disputed domain name in bad faith where the Complainant’s Indian business and marks did not even exist at the date of registration.

The UDRP Is Not a Platform For Failed Negotiations

sha.com WIPO UDRP Case No. D2012-0997: Albir Hills Resort, S.A. v. Telepathy, Inc

  •  “…the UDRP is aimed at providing trademark owners with a remedy for abusive domain name registrations and is not an alternative strategy to obtain the compulsory transfer of domain names legitimately registered by third parties after the failure of acquisition through negotiations.’ – 

tobam.com WIPO UDRP Case No. D2016-1990

  • The complainant did not dispute that the domain owner registered the domain name in 2004, one year before the Complainant was incorporated. The Complainant only started trading under the “Tobam” name in 2008. Citing the long-established consensus view under the UDRP, the single-member panel of the World Intellectual Property Organization wrote: “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established . . . the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
  • The panelist found that the Complainant engaged in reverse domain name hijacking. The domain name owner repeatedly asked Tobam for details on its trademark. During purchase negotiations on Sedo between 2011-2013, Tobam mentioned the trademarks to the domain owner. The domain owner said previous trademark searches did not reveal a trademark and asked for details on the trademark. He even offered to transfer the domain name for free if the trademarks predated his registration of the domain.
  • The panelist concluded that the complainant sought to mislead the panel by omitting key facts about its failed attempts to purchase the disputed domain name, which demonstrated the Complainant attempted to bully the domain owner  into selling the domain at less than its value. “This is a classic ‘Plan B’ case,” the panel concluded, “using the Policy after failing in the marketplace to acquire the disputed domain name” and thus “a highly improper purpose.” For these reasons, the panel denied the complaint and found Tobam guilty of Reverse Domain Name Hijacking.
  • Winning trademark lawyer’s blog post

 

Some older RDNH cases are:

<wallstreet.com WIPO UDRP>

 

Please return for more updates.

 

These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

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