Stick 'em Up! Self Defense Against Reverse Domain Name Hijacking

By Stevan Lieberman & Debora McCormick

If the domain registrant can’t persuade the challenger that she innocently registered the domain without any knowledge of the challenger’s asserted mark, the challenger will most likely take legal action. There are a number of administrative forums where an arbitration may be filed under ICANN’s (Internet Corporation For Assigned Names and Numbers) UDRP (Uniform Domain-Name Dispute Resolution Policy).  

Administrative forums are:

          (1) 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) 

A challenger may also file against a registrant in a 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) 

UDRP 

Under UDRP rules, an action against a domain registrant is available because integrated in all domain name registration agreements is a requirement that each registrant “submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts” and can prove each of the following: 

(i) [that the registrant’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and 

(ii) [that the registrant has]  no rights or legitimate interests in respect of the domain name; and 

(iii) [that the registrant’s] domain name has been registered and is being used in bad faith.

UDRP (4)(a) 

On a certain level the registrant can fight back because the domain registrant is allowed to assert “reverse domain name hijacking” to request 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 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); Syndney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000); Miller Brewing Company v. Yunju Hong, Case No. FA 192732 (Nat. Arb. Forum Dec. 8, 2003).  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, 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) 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) 

If the registrant / respondent fails to prove its case and the panel finds for the complainant, the domain will be transferred within ten business days. Of course the administrative proceeding is binding unless an action is brought in a court of competent jurisdiction within that ten-day period. ICANN, UDRP Rule 4(k). 

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) 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), 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.

Barcelona.com, 330 F.3d at 626. 

Barcelona.com, a case decided by the United States District Court for the 4th Circuit, is instructive in understanding the ICANN UDRP proceedings as well as, the process for bringing a civil action against an overreaching trademark owner for “reverse domain name hijacking.”  In that case a Spanish citizen registered the domain barcelona.com with Network Solutions, Inc., established a Delaware company, Bcom, Inc., in the United States and proceeded to develop the website at the domain as a tourist portal with Barcelona, Spain type information.  After some initial correspondence, the City Council for Barcelona, Spain demanded that Bcom, Inc. transfer the domain to them based on their ownership of over 150 Spanish trademarks, the majority of which incorporated the term Barcelona. When Bcom, Inc. refused, the City Council filed an administrative complaint with WIPO, under the ICANN policy.  The single panelist found 1) that Bcom, Inc.’s domain was confusingly similar with the Barcelona’s City Council’s 150 trademark, 20 that Bcom, Inc. had no legitimate interest in the domain, 3) that Bcom, Inc. registered the domain in bad faith and ordered the domain be transferred to Barcelona’s City Council. Bcom, Inc. commenced a declaratory judgment action in the US District Court for the Eastern District of Virginia and that court determined that Bcom, Inc. did not have a valid claim for “reverse domain name hijacking.” The court ordered an immediate transfer of the domain.  Bcom, Inc. appealed to the US District Court for the 4th Circuit.  The court found, among other things, that Bcom, Inc. use of the domain was not unlawful under United States law. 

The Lanham Act provides that a term that designates a geographical significance area cannot be a registered trademark unless it has acquired secondary meaning. Barcelona.com, 330 F.3d at 629 (citing Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp., 148 F.3d 417, 421 (4th Cir. 1998).  In other word, “ ‘Barcelona’ should have been treated as a purely descriptive geographical term entitled to no trademark protection. (See 15 U.S.C. § 1052(e)(2))” Id.  Since the trademark owner, Barcelona City Council, did not have US trademark rights in “Barcelona,” they could not assert those rights against the domain registrant.  Therefore, Bcom, Inc.’s use of barcelona.com was not unlawful. Thus Bcom, Inc. established entitlement to relief under 15 U.S.C. § 1114(2)(D)(v) with respect to the domain name. Barcelona.com, 330 F.3d at 629. 

Unlike the UDRP Rule 15(e) the ACPA, § 1114 (2)(D)(iv), provides remedies to the registrant if a challenger, in bad faith, attempts to deprive a registered domain name holder of a domain name. That is, if a registrar refuses to register, removes from registration, transfers, temporarily disables, or permanently cancels a domain name “based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark” that person (the challenger) “shall be liable for any damages, including costs and attorney's fees, incurred by the domain name registrant as a result of such action.” Additionally, the court is authorized to grant injunctive relief to the registrant, to reactivate the domain or to transfer the domain name to the registrant. 15 U.S.C. § 1114(2)(D)(iv). 

Under United States law, corporations use the ACPA to assert their rights. The ACPA allows the owner of a distinctive or famous trademark or service mark to bring an action against a domain registrant, an alleged cyber pirate,[iii] if the mark owner can show that 1) the registrant’s domain is identical or confusingly similar to the owner’s distinctive mark or identical, confusingly similar or dilutive of an owner’s famous mark and if 2) the alleged cyber pirate used, registered, or trafficked in the domain name with the bad faith intent to profit from the sale of the domain name. 15 U.S.C. § 1125 (d)(1)(A). 

In order to determine if a trademark owner indeed has a distinctive or famous mark and to determine if the registrant’s domain name is identical or confusingly similar to the trademark owner’s mark, courts use traditional trademark law standards and principles.   

However, the principle of “bad faith,” is the defining principle that may allow the trademark owner to not only “take” the domain, but also obtain additional damages against a domain name registrant.  Therefore, the ACPA identifies the following criteria a court must use to determine whether the domain name registrant registered the domain in “bad faith” with the intention to profit from the use of the domain: 

1)      whether the domain name registrant has trademark rights or other intellectual property rights in the disputed domain,

2)      the extent that the domain is the registrant’s legal name or a name by which the registrant is commonly known,

3)      whether the registrant has prior use of the domain to identify bona fide goods or services,

4)      whether the registrant has bona fide non-commercial or fair use of the domain,

5)      whether it is the registrant’s intent to divert consumer’s from the trademark owner’s site to the registrant’s site either for commercial gain or to tarnish, dilute or disparage the trademark owner’s mark by confusing consumers into believing that the registrant’s site is sponsored by the trademark owner,

6)      whether the registrant offers the domain for sale to the trademark owner, with the intent to profit from the sale, without intending to use the domain for a bona fide purpose, or there is an indication of a pattern of such conduct,

7)      whether the registrant uses false contact information when registering the domain, or has a pattern of such conduct,

8)      whether the registrant’s has acquired multiple domain names which the registrant knows are similar to famous or distinctive marks, and

9)      to what extent the trademark is used in the domain of the registrant is distinctive or famous.

15 U.S.C § 1125 (d)(1)(B)(i). 

*****

Author's contact information:
Stevan Lieberman & Debora McCormick
Greenberg & Lieberman
314 Philadelphia Ave.
Takoma Park, MD 20912
888-275-2757 Toll Free
301-588-8393 Phone
301-588-3292 Fax
stevan@aplegal.com
http://www.aplegal.com/

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