Cybersquatting Cases

There are four main types of Cybersquatting cases:

  1. Domain name owners suing to stop domain hijacking and claiming damages.
  2. Trademark owners suing for Domains registered in bad faith to get the domain name canceled or transferred – “In Rem.”
  3. Trademark owners suing for Domains registered in bad faith to get the domain name canceled or transferred and claiming damages.
  4. Trademark owners suing for their Domains registered in bad faith by their website developers to get the domain name transferred to them and claiming damages.

 

Cybersquatting Cases to stop domain hijacking and claiming damages

Chris Gillespie v. Google, 2017,
Status: On appeal before the 9th circuit
Alphabet won a UDRP against Chris Gillespie who registered 763 domain names containing the term “google” (e.g., googledisney.com, googlebarakobama.net, etc.). Gillespie said he registered the domains as an academic experiment to test a computer program he created to help prevent cyberpiracy, and that he chose “google” as the base term because it was “both a generic term and a very highly searched term.”
 
 
 

Cybersquatting Cases against Web Developers

A business partner or a web developer who registered a domain name in their own name instead of the business name.
DSPT Intern., Inc. v. Nahum (9th Cir. 2010) 624 F.3d 1213
 
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

Cybersquatting

The cybersquatting law is also called the Anticybersquatting Consumer Protection Act or the ACPA.

  • Cybersquatting cases are a tool for trademark owners to seize later registered domain names that are registered by domain pirates in bad faith with regard to a given domain name.
  • Cybersquatting does not apply to domains registered before a matching trademark or domains put to a legitimate use.
  • Bad faith examples:
    • Trying to sell the domain name back to a trademark holder.

Cybersquatting Law:

The Anti-Cybersquatting Consumer Protection Act establishes civil liability for both “cyberpiracy” and “domain hijacking” in a federal district court in the United States of America.

Cybersquatting Definition:

In a cyberpiracy complaint, a plaintiff must prove that:

(1) the defendant registered, trafficked in, or used a domain name;

(2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and

(3) the defendant acted “with bad faith intent to profit from that mark.”

In a relevant part, the statute reads:

(d) Cyberpiracy prevention

(1) (A)

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person —

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that —

Cybersquatting Examples

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark.

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
15 U.S.C. § 1125(d)(1)(A).

Cybersquatting Bad Faith

(B)
(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

15 U.S.C. § 1125(d)(1)(B)

(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant’s authorized licensee.
(E) As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.

RDNH Domain Hijacking and the Cybersquatting Law

If someone engages in domain hijacking, using ICANN’s Uniform ‭Domain Name‬ Dispute Resolution Policy‬‬ “UDRP” at either WIPO or the NAF, they can also be liable to the domain owner under the ACPA for statutory damages of “not less than $1,000 and not more than $100,000 per domain name, as the court considers just” and court costs and attorney’s fees.
Some UDRP Complainants engage in a pattern of harassing domain name owners by making unsupportable demands based on faulty claims or by asserting a fraudulently obtained trademark. A punitive award is sometimes appropriate in a Court’s discretion, depending on a defendant’s assets and the extent of the defendant’s over-reaching.
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.”
A case involves a violation of 1125(d)(1) when a domain owner is seeking a determination that it was not violated section 1125.
Hence, a domain owner is entitled to statutory damages in an amount between $1,000 and $100,000 within the discretion of a Court.
In the alternative, the statutory damage guidelines provide a symmetric guideline for a court to consider in relation to an appropriate range of damages under the ACPA generally which is believed to be of deterrent and precatory effect to cybersquatters.

Examples of Cybersquatting:

There are many cybersquatting cases against people or businesses who register a well-known trademark as a domain name, and then attempts to profit in bad faith by either:

  1. Selling the domain name back to the trademark holder, or (2) using the domain name to divert, business from the trademark holder.
  2. Using the domain name to divert, business from the trademark holder.

Other cybersquatting cases involve a business partner or a web developer who registered a domain name in their own name instead of the business name. DSPT Intern., Inc. v. Nahum (9th Cir. 2010) 624 F.3d 1213

Defenses to Cybersquatting Cases

There are often valid defenses to cybersquatting cases, such as:

  • Legitimate use: In Delta Faucets vs. Delta Airlines, who gets delta.com?
  • Extraterritorial defense, so there is no bad faith if use is in a different country.
  • Fair use in a comment or criticism site
  • A parody website that criticizes the original work that it refers to, usually in a fun and entertaining way.
  • No likelihood of confusion, due to disclaimers (usually works, with some exceptions)
  • Dictionary names with low distinctiveness.
  • Generic names about a product or a service.
  • Short acronyms that could be legitimately used for so many different organizations.
  • Geographic location names or descriptions.
  • Laches: Most jurisdictions have limitation periods of 2 to 4, but the WIPO UDRP panelists say that 13 years is too long to bring a case.

Cases Awarding Damages for RDNH under ACPA for Not-Cybersquatting

Cybersquatting Cases

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

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.
  5. How a UDRP is decided:

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)      Respondent has no rights or legitimate interests in respect of the domain name; and

(3)      the domain name has been registered and is being used in bad faith.

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.

Lack of Bad Faith in Domain Name Registration

Domain names matching trademarks that not distinctive at the time the domain name registration could not have been registered in bad faith, regardless how subsequently they may have been used: novelist.com RDNH and platterz.com RDNH requested and granted in both cases. If the Complainant can’t prove the element of Bad Faith in registering a domain name, the UDRP should be denied and and an RDNH should be granted under the WIPO UDRP Overview 3.0 standard.

novelist.com RDNH

  • Respondent in turn argues that the term “NOVELIST” in the Domain Name is common and generic, and therefore Complainant does not have an exclusive monopoly in the term on the Internet. The Panel accepts that Respondent can establish rights or legitimate interests in the Domain Name on the basis that a respondent may have a legitimate interest in a domain name.  That is, if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word. Respondent asserts that it uses the Domain Name with its online shopping by listing hyperlinks to constantly selected novel items, hence a play on the words “novel” and “list.” In the Panel’s view this argument is plausible and is sufficient to shift any burden of proof. Accordingly, the Panel concludes that Respondent has shown that, in the present circumstances, it has sufficient rights or legitimate interests in the Domain Name.
  • Respondent first argues that it could not have registered the Domain Name in bad faith because it registered the Domain Name ten years prior to the registration of Complainant’s Mark. It is well established that a domain name predating a complainant’s registration and first use of a trademark can be used to evince a good faith registration. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
  • Respondent similarly contends that it could not have had any knowledge of Complainant’s Mark because it simply didn’t exist at the relevant time. In the Panel’s view the fact that the Domain Name is identical is irrelevant – the fact is that the Domain Name was registered 20 years ago and 10 years before Complainant’s Mark came into existence. That, in and of itself, is sufficient to deny any possible suggestion of bad faith on Respondent’s part.
  • Accordingly, the ground of bad faith is plainly not made out.
  • The Panel infers that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith.  The Panel finds there is sufficient evidence to this effect, and therefore concludes that reverse domain name hijacking has occurred.  See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

platterz.com RDNH

  • Respondent registered the Domain Name in 2008, seven years before Complainant was organized as a business entity and seven years before it applied to register its alleged mark.
  • Respondent argues that there can be no bad faith on its part because he registered the domain name years before Complainant began its business.  As the Panel found inTelecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007), a respondent can not be found to have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.  This is exactly the case here, as Complainant’s earliest use of the PLATTERZ mark is alleged to be in 2015, and Respondent has held the domain name since 2008.
    • The WIPO Decision Overview 3.0 states under 3.8.1:Subject to scenarios described in 3.8.2 [dealing with domain names registered in anticipation of trademark rights], 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.
  • In that circumstance, “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.” WIPO Decision Overview 2.0 at 3.1.
  • (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration”). See also, Mile, Inc. v. Michael Berg, WIPO Case No. 2010-2011; WIPO Decision Overview 3.0 at ¶ 3.9.
  • Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003.

Reverse Domain Name Hijacking

  • Respondent requests a finding of reverse domain name hijacking.  This is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  Rule 15(e) 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.
  • Complainant and its counsel knew or should have known when they filed this case that Complainant could not possibly prove bad faith registration, since Respondent registered the Domain Name seven years before Complainant began using its PLATTERZ mark.  Complainant and its counsel knew or should have known that the renewal/re-registration argument was universally discredited and would not be accepted by any Panel.  WIPO Overview 2.0 at ¶  3.7; WIPO Decision Overview 3.0 at ¶¶  3.2.1, 3.8, 3.9.
  • Even worse, Complainant and its counsel attempt to deceive the Panel by citing TMP Int’l Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) for the proposition that bad faith can be found when a domain name is registered prior to the establishment of trademark rights.  That case, though, stands for no such proposition; rather, it stands for the noncontroversial proposition that registration can be in bad faith if the registration is after the establishment of common law trademark rights, even if the trademark is not registered until after the domain name registration.  In TMP, Complainant established common law trademark rights through its use in commerce since 1998, and subsequently registered its trademark with the United States Patent and Trademark Office in 2003.  The domain name, though, was registered in 1999, after the development of common law trademark rights.  Here, in contrast, the domain name was registered seven years before any trademark rights – common law or otherwise.
  • Given that there was no possibility of bad faith registration, this Complaint was doomed to failure from the start.  Complainant and its counsel knew or should have known that Complainant would have to prove both bad faith registration and bad faith use in order to prevail.  Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case NoD2000-0003.  It is undisputed that Complainant attempted unsuccessfully to buy the Domain Name from Respondent in February 2016 and again in February 2017, and this action followed.  For the foregoing reasons the Panel is convinced that Complainant filed this action in bad faith, perhaps as an alternative acquisition strategy, but in any event without any legal or factual basis for its claims.
  • The Panel therefore finds Reverse Domain Name Hijacking and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Use of a Domain Name in a UDRP

A UDRP filed by a Complainant whose trademark became distinctive after a domain name was registered should be denied.
Asserting marks not distinctive at the time of domain name registration is an attempt to hijack a domain name. How the domain name subsequently may have been used is irrelevant under the UDRP and the ACPA. By definition, domain names registered before marks became distinctive could not have been made in bad faith.
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”. In the WIPO Overview 3.0 released in 2017, the editors now acknowledge that “following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH” (Paragraph 4.16)
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 trademark became distinctive of the Complainant after the domain name was registered.
  • 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 notable 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

December 2017 RDNH Cases

A National Arbitration Forum panelist has found Kittrich Corporation, owner of a line of pest control products called EcoSmart, to have engaged in reverse domain namehijacking over the domain name Get Rid of Bugs, Kill Bugs, Hawaii Pest Control with Natural Bug Treatment.

While the complainant has been using the term EcoSmart for its products for a long time, the respondent’s predecessor-in-interest has been using it for longer for its pest control business in Hawaii.

The panelist ruled that the Hawaiin business had rights or legitimate interests in the domain name based on its long-running use of the name for its own pest control services.

Panelist Dennis A. Foster also determined that Kittrich Corporation was guilty of reverse domain name hijacking for filing the case. As it turns out, the domain owner’s lawyer had previous correspondence with EcoSmart about trademarks and had offered to prove its rights in the mark pre-dating the complainant’s. It’s a bit more complicated than that, however. That correspondence occurred a month before Kittrich acquired EcoSmart, so it’s possible that it wasn’t aware of the communications.

Informa Business Information, a company that publishes information about the biopharma industry called The Pink Sheet, has been found to have engaged in reverse domain name hijacking for the domain name pinksheet .com.

Informa Business Information guilty of reverse domain name hijacking – Domain Name Wire | Domain Name News & Website Stuff

HugeDomains has successfully defended its domain name VirginLiving .com against an attack by Virgin Enterprises, and Virgin has been found guilty of reverse domain name hijacking in the case.

Stobbs IP represented Informa Business Information for pinksheet .com and Virgin Enterprises for VirginLiving .com.

Inspectorate America Corporation has been found to have engaged in reverse domain name hijacking over the domain name loams .com. The company has a software program called LOAMS, which stands for Lube Oil Analysis Management System.

The domain owner, Netcorp, said it registered the domain name because it’s a typo of “loans”. Netcorp owns several other typos of dictionary words.

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.