How to Deal with Reverse Domain Name Hijacking
The fact that one owns a trademark which is identical or confusingly similar to a domain name does not necessarily mean that she is entitled to that domain name. For example, under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) managed by the Internet Corporation for Assigned Names and Numbers (ICANN), a trademark holder will also need to prove that the domain name owner: (1) has no rights or legitimate interests in respect of the domain name; and (2) registered and uses the domain name in bad faith. The term “bad faith” can be broadly defined as “intent to deceive.”
When a trademark holder attempts to secure a domain name by falsely claiming that he is entitled to the domain name, she commits reverse domain name hijacking. This article illustrates the practice of reverse domain name hijacking by examining three recent UDRP cases (Section 2). Next, it provides guidelines on how to respond to reverse domain name hijacking (Section 3). Finally, a conclusion is drawn (Section 4).
2. Three cases of reverse domain name hijacking
This section examines the following three UDRP cases: RVK v. Gregory Ricks (Section 2.1), Arif Develier v. Domain Administrator (Section 2.2), PFIP, LLC v. Marco Jud (Section 2.3).
2.1 RVK v. Gregory Ricks
This case relates to the domain name rvk.com, which was registered in 2000. The complainant argued that it was using the trademark RVK “since at least 1992.” As an evidence of use of the trademark in 1992, the complainant presented a letter containing the initials RVK as part of its letterhead. The panel found that the letterhead was not sufficient to provide trademark rights. Furthermore, it stated that there was no evidence that the respondent was engaged in any bad-faith conduct. At a request of the respondent, the panel declared that the complaint constitutes a case of reverse domain name hijacking because:
“Complainant must therefore have been aware that Respondent cannot have registered the disputed domain name in bad faith, since he cannot possibly have known of Complainant’s as-yet-nonexistent claim to the mark.”
2.2 Arif Develier v. Domain Administrator
The complainant in Arif Develier v. Domain Administrator was a Turkish national who claimed century-old rights to the name “Develi.” More particularly, he argued that the name “Develi” was used in relation to a restaurant chain founded by his grandfather in 1912. The respondent asserted that the disputed domain name “develi.com” holds a non-trademark meaning arising from the Turkish city of Develi, which was established over 200 years ago. Hence, the name was too generic to be registered as a trademark on its own. The panel agreed with the respondent and regarded the complaint as a form of reverse domain name hijacking because the complainant knew or ought to have known at the point of filing the complaint that he relies upon bare statements with no supporting evidence.
This case resembles to some extent a domain name case from 2002 in which her majesty the Queen of England, in right of her Government in New Zealand, argued that she had trademark rights in the name New Zealand. However, the panel rejected the claim by stating:
“But indications of geographical origin are not of themselves trade/service marks. They are not trade/service marks for precisely the reason that they serve to indicate geographical origin. Trade/service marks on the other hand indicate a very precise trade origin. They identify the specific trader, the source of the goods/services. Ordinarily, an indication of geographical origin cannot serve that purpose. A wine label reading “NEW ZEALAND wine,” for example, indicates that the wine emanates from New Zealand, but it does not indicate which of the hundreds of New Zealand wine producers is the source of that particular wine.”
Moreover, the panel pointed out that the complainant was well aware that the claim to trademark and service mark rights in respect of the name New Zealand was baseless and found that the Queen, through her New Zealand government representatives, engaged in the practice of reverse domain name hijacking.
2.3 PFIP, LLC v. Marco Jud
The case PFIP, LLC v. Marco Jud relates to the domain name judgmentfree.com. The complainant was the owner of over 800 fitness club locations throughout the United States. The panel found that the complainant did not provide sufficient evidence proving that the disputed domain name was registered in bad faith. Furthermore, the panel stated that, since the complainant and its counsel were experienced participants in the UDRP process, they should have recognized that the complaint was groundless. At the end of the decision, the UDRP panel stated that the complaint constituted an abuse of the administrative proceeding, i.e. reverse domain name hijacking.
3. How to respond to reverse domain name hijacking
Organizations often instruct their lawyers to start dispute resolution procedures against the legitimate owners of domain names in order to persuade the owners to sell or otherwise transfer their domain names. The claims initiating such procedures may look incomprehensible for domain name owners having no legal education. The locking of the disputed domain name by the domain name registrar (a normal UDRP practice) can further aggravate the situation. The effect of the locking is that the domain name owner will not able to transfer the disputed domain name until the end of the dispute resolution proceedings.
In order to avoid hiring lawyers as well as any further legal complications, the domain name owners may agree to sell or even transfer without payment their domain names as soon as they receive a notice of a claim. If the domain name owners would like to keep the ownership in the disputed domain names, they need to consult an Internet lawyer immediately after receiving any legal claims. Any information sent by the domain name owners to the complainants can be used by the complainants during the future legal proceedings. For example, if the “scarred” domain name owner proposes to sell the domain name to the complainant, such a proposal may be regarded as an evidence of bad faith.
Legitimate domain name owners need to resist the natural inclination to comply with authorities (i.e. accepted sources of expert information), such as governmental authorities and prestigious law firms. As the aforementioned case brought by her majesty the Queen of England indicates, the fact that such organizations submit a claim does not necessarily mean that the claim is well grounded.
However, scientific research shows that humans are inclined to trust authorities. For example, in 1960, the social psychologist professor Stanley Milgram conducted an experiment wherein volunteers were given instructions to deliver electric shocks (up to 450 volts) to other volunteers. The electric shock was a punishment for failing to complete a trivial task, such as a memory test. The persons receiving the shock protested to the voltage by painfully shouting and expressing warnings of heart conditions. The professor insisted upon more shocks and, surprisingly, the volunteers delivered them. Robert Cialdini refers to a similar study in which the researchers phoned 22 nurse’s stations. The caller presented himself as a medical doctor and told each nurse to administer 20 milligrams of the drug Astroten to a patient. In 95% of the cases, the nurse complied with doctor’s order despite of the fact that: (1) she has never met the self-proclaimed doctor; (2) the drug was not approved by the hospital; and (3) the dosage was twice the maximum daily dose indicated on the container of the medication. The two experiments clearly indicate people’s inclination to comply with authorities.
In addition to resisting the above-mentioned inclination, a domain name owner who believes that the complainant abuses the dispute resolution proceedings need to explicitly request the panel to declare the existence of reverse domain name hijacking. Such a declaration has two main implications. Firstly, the victim of reverse domain name hijacking may later commence court proceedings with the aim to receive damages. Secondly, the UDRP decision containing a declaration of reverse domain name hijacking will be made publicly available. After the publication, media reporters will probably read the decision and write numerous articles titled “Company X found guilty of reverse domain name hijacking.” If you would like to view a list of companies that were subjects of such articles, you can simply type in Google “guilty of reverse domain name hijacking.” The negative advertising usually has a strong effect on the companies, as no company would like its customers to see on the first page in Google that it was found guilty of a complex term ending at “hijacking.” Once a company’s reputation has been damaged by its reverse domain name hijacking practices, it is hardly to believe that the company will engage again in such practices.
Reverse domain name hijacking claims have a negative impact on the legitimate domain name owners. This is not only because the domain name owners incur expenses related to hiring lawyers, but also because they will not be able to sell (or otherwise transfer) their domain name during the course of the dispute resolution procedures.
After receiving a claim that seems to constitute reverse domain name hijacking, the domain name owner needs to complete two steps. Firstly, she has to contact a lawyer specializing in Internet law. If the domain name owner tries to self-defend herself, this may lead to her loss of the disputed domain name. Secondly, she must request the panel deciding on the case to announce the existence of reverse domain name hijacking. The announcement may harm the reputation of the complainant and motivate her not to submit any unjustified claims in the future.
* The author would like to thank Rasa Juzenaite for her invaluable contribution to this article.
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