Domain name registrants and trademark holders are increasingly using the Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint, administered by the World Intellectual Property Organization (“WIPO”), to enjoin another domain name that is (a) confusingly similar; (b) registered and used in bad faith; and (c) obtained without legitimate interest.
The UDRP mechanism is one of the most convenient modes of enforcing domain name rights under legitimate complaints; however, this quick and speedy resolution for domain disputes has also encouraged many frivolous complaints. Therefore, the UDRP rules include conditions where the complainant can be held liable for Reverse Domain Name Hijacking (“RDNH”). The UDRP Rules define RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”[1] The Rules also provide that, 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.[2]
The WIPO Panel has applied the UDRP Policy and the UDRP Rules relating to RDNH to prohibit fraudulent and illegitimate claims by complainants and to deter prospective bad faith claims. In GSL Networks Pty Ltd. v. Domains By Proxy, LLC / Alex Alvanos, the Panel found RDNH where (1) the domain name was registered long before the Complainant’s trademark existed, and (2) Complainant presented no evidence indicating Respondent’s bad faith.[3] Similarly, in LERINS & BCW v. Domain Administrator, NameFind Cayman Islands Ltd, the Panel found RDNH because the Complainant (1) did not recognize the weakness of their case, (2) did not craft a strong argument for bad faith, and (3) filed a complaint only after failing to purchase the disputed domain name from Respondent’s predecessor.[4] Lastly, in HBA Holding LLC v. William Sylvester, the Panel found RDNH because Complainant brought a case with the “barest of allegations without any supporting evidence… [for] what is essentially a trademark infringement dispute.”[5]
The Panel has also ruled on multiple occasions that complainants did not engage in RDNH. In Eiyolab v. Yave Fernandez Perez, Ayolabs S.L., the Panel held that the Complainant did not engage in RDNH, even though the case was filed without supporting evidence, because Complainant considered the Respondent a competitor and misjudged the nature of their case by relying on phonetical similarities between the disputed domain name and their trademark.[6] The Panel also denied RDNH in Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, holding that the Complainant’s case was not filed in bad faith because the trademark was closely reproduced in the disputed domain and valid trademark infringement arguments were made.[7] The Panel explained that RDNH is a form of equitable relief, and that equitable relief “should only be available to a party who comes before a panel with clean hands.”[8] Since the Respondent made their own frivolous arguments, they were not entitled to a RDNH ruling in their favor.[9] Further, WIPO has clarified that the mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking[10].
The abovementioned cases, along with the Rules and Policies, elucidate that even though the Panel will declare a complainant guilty of RDNH, the UDRP Panel requires substantial proof of the complainant’s bad faith before making that declaration. This appears to be a conscious effort from the Panel to achieve the dual objectives of deterring invalid, bad faith complaints and of encouraging domain name and trademark holders to seek fast-track remedies against unwarranted registrations of spurious domain names.
[1] ICANN, Archived Rules for Uniform Domain Name Dispute Resolution Policy (Oct. 24, 1999), http://www.icann.org/udrp/udrp-rules-24oct99.htm.
[2] Id.
[3] See GSL Networks Pty Ltd. v. Domains By Proxy, LLC / Alex Alvanos, Bobservers, WIPO Arb. and Mediation Ctr. Case No. D2021-2255 (Sep. 27, 2021) (Lothian, arb.), https://www.wipo.int/amc/en/domains/decisions/text/2021/d2021-2255.html.
[4] See LERINS & BCW v. Domain Administrator, NameFind Cayman Islands Ltd., WIPO Arb. and Mediation Ctr. Case No. D2021-1861 (Aug. 7, 2021) (Barbero, arb.), https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1861.
[5] See HBA Holding LLC v. William Sylvester, WIPO Arb. and Mediation Ctr. Case No. D2021-0048 (Mar. 22, 2021) (Nahitchevansky, arb.), https://www.wipo.int/amc/en/domains/decisions/text/2021/d2021-0048.html.
[6] See Eiyolab v. Yave Fernandez Perez, Ayolabs S.L., WIPO Arb. and Mediation Ctr. Case No. DEU2020-0015 (Oct. 27, 2020) (Comanescu, arb.), https://www.wipo.int/amc/en/domains/search/text.jsp?case=DEU2020-0015.
[7] See Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, WIPO Arb. and Mediation Ctr Case No. D2021-1486 (July 6, 2021) (Bernstein, arb.), https://www.wipo.int/amc/en/domains/decisions/text/2021/d2021-1486.html.
[8] Id.
[9] Id.
[10] See WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions (last visited Oct. 26, 2021), https://www.wipo.int/amc/en/domains/search/overview3.0/.