Reverse domain hijacking
Reverse domain name hijacking (also known as reverse cybersquatting), occurs where a trademark owner attempts to secure a domain name by making false cybersquatting claims against a domain name’s rightful owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly perpetrated by larger corporations and famous individuals.
Reverse domain name hijacking is an analogue to the practice of domain hijacking, wherein domain name registrants registered domain names containing famous third party trademarks with the intent of profiting by selling the domain names back to trademark owners. Trademark owners initially responded by filing cybersquatting lawsuits against registrants to enforce their trademark rights. However, as the number of cybersquatting incidents grew, trademark owners noticed that registrants would often settle their cases rather than litigate. Consequently, although the filing of cybersquatting lawsuits began as a defensive strategy to combat cybersquatting, such lawsuits also can be used as a way of strongarming innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.
UDRP Restrictions on Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process. It becomes difficult to objectively quantify what constitutes subjective “bad faith,” resulting in panels often viewing parties’ factual discrepancies as indeterminable or immaterial at best. Therefore, despite its express recognition in the UDRP, reverse domain name hijacking findings are rare and based heavily on the factual circumstances surrounding each case.
Circumstances which have been cited by WIPO panels as justification for a finding of reverse domain name hijacking includes:
- When the registration of the domain predates any trademark rights of the Complainant.
- When the complaint has provided no evidence of bad faith registration or use directed towards the Complainant.
- Where the Complainant has used the UDRP as a Plan "B" option to attempt to secure the domain after commercial negotiations have broken off.
- Where the Complainant has attempted to deceive the domain owner or makes misrepresentations or fails to disclose material information to the panel.
Examples of such findings include the following WIPO cases: Ron Paul vs. RonPaul.org (2013), Webpass, Inc. v. Paul Breitenbach (2010), Urban Logic, Inc. v. Urban Logic, Peter Holland (2009), David Robinson v. Brendan (2008), Decal v. Gregory Ricks (2008), Hero v. The Heroic Sandwich (2008), Poker Host Inc. v. Russ “Dutch” Boyd (2008), FCC Fomento de Construcciones y Contratas v “FCC.COM” (2007), Liquid Nutrition v. liquidnutrition.com (2007), Rohl, LLC v. ROHL SA (2006), Her Majesty the Queen (Elizabeth II) v. Virtual Countries, Inc., and Deutsche Welle v. DiamondWare (2000). A list of over one hundred reverse domain name hijacking decisions is available at RDNH.com.
Although UDRP panelists currently have no tools by which to punish abuses such as Reverse Domain Name Hijacking, such a finding might be used in a local jurisdiction where such abuses might constitute a tort such as tortious interference with contract or an unfair business practice.
ACPA Restrictions on Reverse Domain Name Hijacking
The Anticybersquatting Consumer Protection Act does not expressly recognize reverse domain name hijacking and often only limits defendants’ recovery to retention or transference of the domain name. It also fails to provide any remedies for victims of attempted reverse cybersquatting. However, the statute permits some monetary relief where bad faith, reckless disregard or the willful violation of a court order are involved.
Similarly, a 1975 amendment to the Lanham Act gives courts discretion in awarding reasonable attorneys’ fees to a prevailing party in “exceptional” circumstances. In attempting to define “exceptional,” Circuit courts are split as to what objectively constitutes malicious, fraudulent, or deliberate misconduct. Some courts award such fees where bad faith or baseless litigation is involved while other courts look for economic coercion or failure to reference controlling law. Nevertheless, due to the inherent animosity arising from being sued, courts generally hold prevailing defendants to a higher level of scrutiny, requiring vexatious or harassing conduct to shift attorney’s fees in their favor.
Neither the UDRP nor the ACPA provides much deterrent to curb trademark owners’ abuse of their rights. To abate reverse domain name hijacking practices, some legal professionals believe Congress should enact laws that are specifically designed to facilitate litigation against reverse cybersquatters. Similarly, some advocates argue for stronger penalties to deter the unlawful deprivation of validly registered domain names, such as fines and precluding offending trademark owners from filing cybersquatting claims for a designated period of time.
- Sallen v. Corinthians Licenciamentos Ltda., 2002 U.S. Dist. LEXIS 19976 (D. Mass. Dec. 19, 2000), rev’d, 273 F.3d 14, 17 (1st Cir. 2001) [hereinafter Sallen].
- Warren B. Chik, Lord of Your Domain, But Master of None: The Need to Harmonize and Recalibrate the Domain Name Regime of Ownership and Control, 16 INT’L J.L. & INFO. TECH. 8, 60 (2008) [hereinafter Chik].
- Sallen, supra note 1.
- Schmidheiny v. Weber, 164 F.Supp.2d 484, 487 (E.D. Pa. 2001).
- Fridman, David. "Domain Hijacking and the Risks it Poses to your Brand". BrandShield. Retrieved 22 October 2014.
The smaller rightful domain owners are often intimidated by legal action and much of the time give up the rights to that domain.
- Int'l Driver Training, Inc. v. Web Integrations, LLC and Comedy Driving Inc., D2009-0129 (WIPO Arbitration and Mediation Center, Apr. 9, 2009).
- "New Zealand v. Virtual Countries, Inc". Retrieved 22 October 2014.
- Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d)(2) (2006).
- Frayne v. Chicago 2016, 2009 WL 65236 *2 (N.D. Ill. 2009); General Media Comm., Inc. v. Crazy Troll, LLC, 2007 WL 102988 (S.D.N.Y. 2007).
- Id. at 1125(d)(2)(ii).
- Christopher P. Bussert, Interpreting the “Exceptional Cases” Provision of Section 117(a) of the Lanham Act: When an Award of Attorney’s Fees is Appropriate, 92 TRADEMARK REP. 1118, 1118-19 (2002).
- S. Rep. No. 93-1440, at 5 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7136.
- Anne M. Mellen, Awarding Attorneys’ Fees Under the Lanham Act: Egregious Litigation Conduct in the “Exceptional” Case, 74 U. CIN. L. REV. 1111, 1117 (2006).
- Lewis, Brett. "Reverse Domain Hijacking: Extreme Makeover". DNJournal. Retrieved 22 October 2014.
- Chik, supra note 2 at 60.