Reverse domain hijacking

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The term reverse domain hijacking refers to the practice of acquiring domain names from owners by accusing them of violating trademarks with the domain name, and demanding that the domain be transferred.

Cybersquatting refers to the practice of domain hijacking without the legal right, in which a domain name, consisting of a trademark or another well-known name is registered solely with the intent of selling it to the trademark owner later on.

A widely regarded case of reverse domain hijacking occurred in 2000, when the Deutsche Welle attempted to acquire the domain dw.com from software company Diamond Ware. This attempt was reprimanded as reverse domain hijacking in 2001 by the WIPO [1].

The Defense and Counterclaim of Reverse Domain Name hijacking is valid in either the arbitration forums or the courts of law.

Administrative forums are:

WIPO (World Intellectual Property Organization - Geneva)[2],
NAF (The National Arbitration Forum – Minneapolis, USA)[3],
ADNDRC (Asian Domain Name Dispute Resolution Centre – Beijing and Hong Kong, China)[4],
CPR (CPR Institute for Dispute Resolution - Asia)[5]

The Courts of Law are any court of competent jurisdiction. (A court of competent jurisdiction is one that has both subject matter and personal jurisdiction. Subject matter provides the particular court with the power to hear the case and personal is court’s power over the people or entities involved in the case)

When asserting Reverse Domain Name Hijacking the domain registrant is requesting that the arbitration panel make a finding that the challenger brought the complaint in bad faith pursuant to UDRP Rule 1 and Rule 15(e). In other words, a domain registrant can assert that the complainant is misusing the arbitration proceeding in an attempt to “take” a domain or in an attempt to harass the domain registrant. If the arbitration panel finds that a complainant used the dispute resolution policy in “a bad faith attempt to deprive a registered domain name holder of a domain name,” there is a likelihood that the complaint will fail. However, the UDRP establishes no specific penalties for “reverse domain name hijacking” and a finding by the panel of “reverse domain name hijacking” is rarely granted.

The UDRP[6] decisions are instructive as to what is necessary in order to prevail on a “reverse domain name hijacking” claim. Accordingly, the domain name registrant / respondent must show that “complainant knew of respondent’s unassailable right to legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith.” Goldline International, Inc. v. Gold Line, Case No. D2000-1151 (WIPO, Jan. 4, 2001)[7]; Syndney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000)[8]; Miller Brewing Company v. Yunju Hong, Case No. FA 192732 (Nat. Arb. Forum Dec. 8, 2003)[9]. In other words, the domain registrant must prove that the complainant knew of the registrant’s legitimate interests in or rights to the domain (ie. the domain consists of general, generic terms that others commonly use) and was aware of registrant’s lack of bad faith registration and use of the domain name (ie. the terms incorporated in the domain are descriptive or laudatory of the goods or services for which it will be used).

For example, one early UDRP decision, Goldline International v. Gold Line [10], dealt with the domain “goldline.com,” common terms used in everyday language which can be described as laudatory or even descriptive when used in conjunction with a line of gold jewelry. In this case, the registrant / respondent was an individual who operated under several businesses, including Gold Line Internet, specializing in vanity toll-free numbers, domain name addresses, and the creation of intellectual property. The complainant, Goldline International, Inc., was a business dealing in goods and services relating to coins and precious metals. Gold Line Internet brought a “reverse domain name hijacking” claim against Gold International in its response to the UDRP complaint. Gold Line pointed out to the panel, that although Goldline International had registered trademarks, their rights were not superior to the other GOLDLINE trademark holders. Furthermore, there were at least 47 trademark applications filed since 1958 for “GOLD LINE” and “GOLDLINE” and Goldline International had not objected in any way to any of these applications. The panel reviewed all criteria relating to the registrant’s bad faith and found no evidence that respondent registered “goldline.com” to profit by selling or renting it to Goldline International, that respondent selected the domain because it was laudatory, that respondent’s goods and services were not in the same competitive market, nor was respondent trying to commercially trade on Goldline International’s reputation by creating confusion in the minds of consumers (at that time there were at least 10 other active “Goldline” businesses in California).

After determining that the domain name registrant had no bad faith intent, the panel reviewed the “reverse domain name hijacking” claim. The panel found that “gold line” could have multiple legitimate uses, [i] that complainant’s mark was limited to a narrow field, and that under a reasonable investigation, complainant could have ascertained that respondent did not register the domain in bad faith. Additionally, since respondent had expressly notified complainant of the facts, including the multiple GOLD LINE users, and asserted Goldline International actions abusive if they pursued any further action, the panel found that complainant had engaged in “reverse domain name hijacking.”

More recent UDRP decisions involving “reverse domain name hijacking” follow the same reasoning. When a complainant does not have exclusive use of a possible “generic” mark and a respondent has registered the “generic” term(s) as a domain, then there is the possibility of “reverse domain name hijacking.” Miller Brewing Company v. Yunju Hong, Case No. FA 192732 (Nat. Arb. Forum Dec. 8, 2003)[11] However, despite the generic nature of the terms and because the complainant possesses a registered United States trademark of those generic terms and the respondent registered them as a domain, the panel can find that the complainant had a good faith basis to file the complaint, thus no “reverse domain name hijacking.” Warm Things, Inc. v. Adam S. Weiss, D2002-0085 (WIPO April 18, 2002)[12] Civil Action in US Court

In the United States, the Anticybersquatting Consumer Protection Act (ACPA) 15 U.S.C. 15 U.S.C. § 1114(2)(D)(v) [13]permits the domain name holder the exclusive remedy to bring a civil action when their domain has been suspended, disabled, or transferred as a result of an ICANN proceeding, in order to establish that their use of the domain is not unlawful. The court is authorized under the statute to grant injunctive relief to the registrant, including reactivation or transfer of the domain to the registrant. Id. At this time, a registrant will generally bring a declaratory judgment action, based on “reverse domain name hijacking” 15 U.S.C. § 1114(2)(D)(v) [ii] seeking injunctive relief.

Pursuant to statute and described in Barcelona.com v. Excelentisimo Ayuntamiento De Bardelona, 330 F.3d 617, 626(4th Cir. 2003) [14], in order to establish a “reverse domain name hijacking” claim against an “overreaching trademark owner,” the registrant must show the following:

that it is the domain name registrant;
that its registered domain was suspended, disabled, or transferred under the registrar’s policy as described under 15 U.S.C. § 1114(2)(D)(ii)(II) (a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another's mark);
that the owner of the mark that prompted the domain to be suspended, disabled or transferred is on notice, by service or otherwise, of the action; and
that the registrant’s / plaintiff’s use or registration of the domain is not unlawful pursuant to the Lanham Act.