In the exciting world of UDRP complaints, the complainant/trademark holder will often accuse the domain owner of cybersquatting — that is, of registering a domain that’s confusingly similar to a trademark owner’s mark in bad faith.
But it’s also possible for the complainant, the so-called trademark holder, to be the party acting in bad faith. This skullduggery is called Reverse Domain Name Hijacking.
Paragraph 1 of the UDRP rules define Reverse Domain Name Hijacking (“RDNH” for short) as “using the (UDRP) Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Basically, it’s when an alleged trademark holder overreaches on their purported trademark rights to seize a domain name to which they don’t actually have rights.
Modest-sized organizations and individuals are particularly susceptible to RDNH tactics, as they often lack the expertise, time, or money to defend themselves from a complaint — even the flimsily-supported complaints would-be hijackers commonly make.
So, does a UDRP decision find a complainant to have engaged in bad faith for the purposes of RDNH, and what follows from that decision? Well, this is where it starts getting murky — and controversial.
Who must prove RDNH (and how they can prove it)
Proving RDNH is tricky. Since UDRP panels generally only focus on whether the complainant meets their burden to prove bad faith on the respondent’s part, it’s up to the respondent to prove the complaint itself was made in bad faith and an attempt to hijack the domain.
However, while the UDRP rules states that a bad-faith complaint (like one you’d make in an RDNH case) “constitutes an abuse of the administrative proceeding,” it doesn’t establish the circumstances under which a finding of bad faith should be made.
However, in Paragraph 4.17 of the WIPO Overview 2.0, the World Intellectual Property Organization (one of two organizations that handle UDRP administrative proceedings) outlines what a respondent would “typically” need to show in order to establish RDNH, such as evidence that the complainant was aware of their lack of relevant trademark rights, or of the respondent’s legitimate interest and/or lack of bad faith in the domain. Evidence showing that the complainant harassed the respondent — either through past proceedings in which the complaint was ruled to be groundless, or through saber-rattling tactics like pestering the respondent with cease-and-desist letters — could also help the respondent prove the complainant is abusing the UDRP.
WIPO’s guide may not be as clear-cut as the three elements the UDRP requires a complainant to establish to prevail in a dispute, but it does at least provide a respondent with a jumping off point to start building their case.
Consequences for Reverse Domain Name Hijacking
One major point of controversy with RDNH is how the UDRP sets consequences for it— or more accurately, how it doesn’t.
You see, a UDRP panel’s primary objective is decides whether the respondent keeps the domain or transfers it to the complainant. They do not enforce payment of damages or other compensatory actions. So while a panel can find that a complaint was made in bad faith and therefore “constitutes an abuse of the administrative proceeding” under Paragraph 15(e), there is no established penalty for such a finding.
That’s not very satisfying for a respondent who had to devote their time and effort just to fend off the complaint, and then prove bad faith on the complainant’s part to boot.
One indirect advantage the respondent may be able to exploit is the fact that UDRP cases are made public. A complainant might shrug at the thought of potentially being labeled a “domain hijacker” in a decision, but they might reconsider if the respondent shows from the start that they could alert the press to that outcome.
In fact, some people have even organized to take advantage of the “public shame” angle for all it’s worth. Hallofshame.com is a website devoted to publicly exposing hijackers to the world, in hopes that their humiliation will sway reputation-wary imitators from becoming hijackers themselves. However, the site does not appear to have been updated since 2013, and it is unclear whether it is still operational.
A respondent may also be able to file a lawsuit seeking compensation for their damages, assuming their damages are sufficient to warrant such action. However, such cases aren’t very common, and require considerable effort, time and money before the respondent sees any compensation.
Standing up to Reverse Domain Name Hijacking can be intimidating, and the current UDRP process faces criticism for how it deals with such actions. But if your domain name is worth defending, you are not powerless against RDNH-related scare tactics. If you believe someone is abusing resolution proceedings to wrongly seize your domain name, call a legal professional, take a deep breath, and get ready to fight back.