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.

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].

Contents

[edit] Legal action

The defense and counterclaim of Reverse Domain Name hijacking is valid in either administrative forums or the courts of law.

Administrative forums are:

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

Former administrative forums are:

  1. CPR (CPR Institute for Dispute Resolution - Asia), until January 2007[5],
  2. eResolution, until December 2001[6]

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. More and more “reverse domain name hijacking” judgments are being made.

The UDRP[7] 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)[8]; Syndney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000)[9]; Miller Brewing Company v. Yunju Hong, Case No. FA 192732 (Nat. Arb. Forum Dec. 8, 2003)[10]. 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).

[edit] Goldline case (2000)

For example, one early UDRP decision, Goldline International v. Gold Line [11], 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.”

[edit] Miller case (2003)

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)[12] 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)[13]

[edit] Nissan Case

The nissan.com owner Uzi Nissan was sued for $10 million by Nissan Motor. See reference in salon.com and a second reference here.

[edit] 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) [14]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) [15], in order to establish a “reverse domain name hijacking” claim against an “overreaching trademark owner,” the registrant must show the following:

  1. that it is the domain name registrant;
  2. 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);
  3. 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
  4. that the registrant’s / plaintiff’s use or registration of the domain is not unlawful pursuant to the Lanham Act.


[edit] Other cases

http://www.cira.ca/en/dpr-decisions/00004_B_cheaptickets_ca_decision_en.pdf

http://www.ccnmatthews.com/news/releases/show.jsp?action=showRelease&searchText=false&showText=all&actionFor=639627

CARSALES.COM.AU http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0047.html "In the Panel’s view the Complainant’s actions must have inevitably imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process. The Panel finds reverse domain name hijacking."

'NEWZEALAND.COM http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0754.html HER MAJESTY THE QUEEN & New Zealand Govt named by WIPO Arbitration and Mediation Center as reverse Domain name highjackers - Decision - The Complaint is dismissed and the Panel upholds the allegation of reverse domain name hijacking.'

Kiwi European Holdings B.V. v. Future Media Architects, Inc., WIPO Case No. D2004-0848 (Jan. 4, 2005).

Smart Design LLC v. Hughes, WIPO Case No. D2000-0993 (Oct. 18, 2000).

Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (Jan. 4, 2001). “

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0905.html

http://www.sedo.it/legal/index.php4?tracked=1&partnerid=29141&language=it#link6

http://www.dnjournal.com/legal/sl_reverse_hijacking.htm REVERSE HIGHJACKING

http://domainsmagazine.com/Domains_12/Domain_1351.shtml

$5000 Fines for "Reverse Domain Name Highjackers" http://www.cira.ca/official-doc/CDRP_Policy_2003-12-04_en_final.html Bad Faith of Complainant. If the Registrant is successful, and the Registrant proves, on a balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay to the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect of any Registration with any Provider until the amount owing is paid in full to the Provider.

http://users.ox.ac.uk/~edip/munden.pdf

http://www.vincentnguyen.com/motorazrcom-vs-motorola-the-verdict-is-in-2007138.php http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1393.html MOTOROLA LOSES and a possible REVERSE DOMAIN HIGHJACKER

http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0297.html "In the view of a majority of the Panel, 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. The majority therefore finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking." Decision- For all the foregoing reasons, the Complaint is denied, and a majority of the Panel finds that the Complainant has engaged in reverse domain name hijacking."

[edit] Reference

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