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.

WebMagic Ventures wins UDRP Dispute over dataminer.com

WebMagic Ventures won a UDRP Dispute over its dataminer.com domain name in a WIPO 3-member panel decision, on November 1, 2016. The WIPO UDRP panel also found that the complainant was guilty of reverse domain hijacking “RDNH.”
Skyline Communications filed a UDRP complaint regarding the dataminer.com domain name claiming that it has used the DataMiner brand since about 2001.
The Complainant obtained registration of the DATAMINER trademark in Benelux on July 12, 2016.
The Complainant is the owner of the domain names <dataminer.co>, registered on 2014-01-09, and <dataminer.tv>, registered on 2016-01-26.
The disputed domain name was registered on September 13, 1996.
 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyline Communications NV v. WebMagic Staff, WebMagic Ventures LLC

Case No. D2016-1667

1. The Parties

The Complainant is Skyline Communications NV of Izegem, Belgium, represented internally.
The Respondent is WebMagic Staff, WebMagic Ventures LLC of Pasadena, California, United States of America (“United States”), represented by Oppedahl Patent Law Firm LLC, United States.

2. The Domain Name and Registrar

The disputed domain name, <dataminer.com>, is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2016, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 24, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. At the Respondent’s request, the due date for Response was extended to September 17, 2016. The Response was filed with the Center September 17, 2016. The Center received an unsolicited Supplemental Filing from the Complainant on September 21, 2016.
The Center appointed Pablo A. Palazzi, Andrew F. Christie and Richard G. Lyon as panelists in this matter on October 11, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 14, 2016, at the Panel’s direction the Center advised the Parties: “The Panel disallows the Complainant’s Supplemental Filing in accordance with settled Policy precedent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.2, Consensus View. The Panel will include further explication in its Decision. The Panel requests that neither Party submit any further communication to the WIPO Center without the Panel’s express direction.”
The operative portion of paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides: “The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances.” The cases that have led to this Consensus View make clear that “exceptional circumstances” ordinarily refers to matters that the party making the submission could not reasonably have anticipated when it submitted its original pleading – manufactured evidence1 , a post-pleading UDRP or court decision that bears on the proceeding2 , an event occurring subsequently to the original pleading3 , for example.
The Complainant’s filing was made under the heading “Reply to Respondent’s Response”. The filing addresses the following matters: (i) why the Complainant’s mark should not be considered descriptive, and (ii) a rebuttal that the Respondent’s business is a genuine business, including several mentions of the Respondent’s registration of its domain names as cybersquatting.
The Complainant here fails that test. The Complainant offers no reason why either matter could not have been anticipated and addressed in the Complaint, or anything else that makes its contents exceptional. A complainant who files a complaint based upon a mark registered well after the domain name may expect to be challenged for filing a baseless complaint.
Accordingly the Panel denies the Complainant’s Supplemental Filing, noting also that nothing in the Supplemental Filing would have altered this Decision.

4. Factual Background

The Complainant is a software company located in Belgium. The Complainant has more than 180 employees with offices also in Lisbon and Miami. The sole product of the Complainant is called “Dataminer” and it is a multi-vendor management software.
The Complainant obtained registration of the DATAMINER trademark in Benelux on July 12, 2016. The trademark registration covers goods and services in classes 9, 38 and 42. The Complainant has also applied for an international registration covering several countries which at the time of this decision is pending.
The Complainant is the owner of the domain names <dataminer.co> and <dataminer.tv>.
The disputed domain name was registered on September 13, 1996.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
With respect to the rights and legitimate interest of the Respondent, the Complainant states that:
– the Respondent does not use the disputed domain name in connection with a bona fide offer of goods or services.
– the disputed domain name redirects users to the website at “www.ace.com”.
– the Respondent has never been known under the disputed domain name as a legal entity.
– the Respondent has not acquired any trademark right in the disputed domain name.
– the Respondent does not have any relationship with the Complainant.
With respect to bad faith registration and use the Complainant states that:
– it is “indisputable” that the Respondent is a cybersquatter.
– the Respondent has registered a multitude of domain names with the sole purpose of preventing others from registering them and subsequently potentially reselling those domain names at a high profit.
– the Respondent and the Complainant have been in contact in the years 2005 and 2010 regarding the possibility of transfer of the disputed domain name.
– there is no history of the disputed domain name in the Internet archive because of the Respondent’s use of the “robots.txt” mechanism; this evidences that “Respondent blocked access for Complainant and other third parties to potential evidence for the non-existence of rights or legitimate interests in respect of the [disputed domain name]”.
– even if the bad faith mindset of the Respondent at the time of the registration would hypothetically be in doubt, it is clear that the disputed domain name has also been registered in bad faith. The Complainant cites part of the WIPO Overview 2.0 (paragraph 3.1) and Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455,.
– the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and activities. By blocking the disputed domain name the Respondent is interfering with the Complainant’s ability to fully promote its trademark and control the image and information associated with its trademark and logo.
– it is clear from the emails interchanged between the Respondent and the Complainant that it is the Respondent’s intention to capitalize on the disputed domain name: the Respondent is willing to transfer the disputed domain name, but will not transfer it for out-of-pockets costs.
The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent requests the Panel to reject the Complaint based in the following:
– the disputed domain name was registered nearly 20 years ago.
– the Complainant started use of the “Dataminer” name in Belgium no earlier than about 2001, 2002 or 2003.
– the Complainant contacted the Respondent in 2005 to purchase the disputed domain name and did not succeed. It then contacted again the Respondent in 2010, making an unsolicited offer acknowledging that the Respondent was the owner of the disputed domain name. In 2014, the Complainant made another unsolicited and unsuccessful offer.
– there is no registration in bad faith because the disputed domain name was registered in the year 1996.
– there is nothing in the Complaint explaining why the disputed domain name may have been registered in bad faith in the year 1996.
– The Complainant’s use of the DATAMINER trademark commenced years after the Respondent’s registration of the disputed domain name.
– The Respondent is entitled to legitimate use of a dictionary word.
– The Complainant’s delay of 20 years is unreasonable.
– The Complainant inaccurately represented the text and holding of one of the UDRP decisions that it cited.
– The Complainant’s reference to communications between the Parties is incomplete.
Finally the Respondent requests the Panel to find Reverse Domain Name Hijacking based on the following:
– the Complainant is represented by Counsel.
– The Complainant knew or should have known at the time of the filing of the Complaint that it could not prove one of the essential elements required by the Policy.
– The Respondent lists several additional grounds for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the mark DATAMINER. The disputed domain name <dataminer.com> features the word “dataminer”. The generic Top-Level Domain (“gTLD”) designation “.com” may be disregarded. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is not required to address this element of the Policy in light of its findings on the third element.

C. Registered and Used in Bad Faith

The first part of paragraph 3.1 of the WIPO Overview 2.0 provides, “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date . . . when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), 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 Respondent registered the disputed domain name on September 13, 1996. The Complainant applied for the trademark DATAMINER in the Benelux registry on September 21, 2015. The trademark registration was granted on July 12, 2016.
Therefore, in this case, the disputed domain name was not registered in bad faith because at the time of registration of the domain name the Respondent could not have been aware of the Complainant’s trademark. It would be logically impossible for the Respondent to have acted in bad faith with respect to rights that did not exist at the time.
In addition, the Respondent has not used the disputed domain name to target the Complainant or the Complainant’s competitors. The Complainant does not even plead that the Respondent did so; its allegations are that the Respondent’s sole business is trafficking in domain names which “prevents others from registering [such domain names]”, for potential resale at a profit (Amended Complaint, p. 9); and that the 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.
The Panel notes that paragraph 4(b)(i) of the Policy, upon which the Complainant’s charge is based, calls for registration of the “domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant”. That is not possible if the domain name – as in this case – was registered before the Complainant’s trademark existed.
The Complainant has failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking, or was brought primarily to harass the domain name holder). “Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking.
In the view of the Panel this is a complaint which should never have been launched. The Complainant and its lawyer should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered nearly two decades ago was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. The Complainant should have known that there was no case under the third requirement of the Policy, due to the lack of any use in bad faith of the disputed domain name. In the Complaint, no attempt was made to demonstrate the existence of bad faith registration or bad faith use. In addition, the Complainant contacted the Respondent several times in the years 2005, 2010 and 2014 to try to buy the disputed domain name with no success. After its trademark was registered, the Complainant decided to launch this complaint under the Policy. Finally there are several of the Complainant’s factual and legal contentions that border on the misleading. As an example the Panel mentions the incomplete quote of the holding in the Torus case, as pointed out by the Respondent; mischaracterizing the Respondent’s business (see Response, Annexes 5 and 6); referring to the Respondent’s activities as “cybersquatting” on no more authority than its own judgment (a search by the Panel found no case in which the Respondent was a respondent on the WIPO data base and only two cases on the National Arbitration Forum data base, in both of which the complaint was denied); and calling its mark “not descriptive”.
Therefore, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Pablo A. Palazzi
Presiding Panelist
Andrew F. Christie
Panelist
Richard G. Lyon
Panelist
Date: October 25, 2016


1 E.g., Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706.
2 E.g., Twitter, Inc. v. Geigo, Inc., WIPO Case No. D2011-1210.
3 E.g., Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.
4 E.g,. Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers, WIPO Case No. D2005-0282.