How a UDRP panellist approaches the issues of Reverse Domain Name Hijacking and abuse of process.
by The Hon Neil Brown QC
[Editor’s note: in this exclusive guest article, The Hon. Neil Brown explains how he approaches the question of reverse domain name hijacking in UDRP decisions. Brown is an arbitrator and has heard dozens of cases at National Arbitration Forum and WIPO. He recently wrote a detailed finding of RDNH in a case for Shoeland.com. You can read more about Brown on his web site, DomainTimes.info.]
The first step that a panellist should take is to remind him or herself that, as with all issues, an application for a finding of Reverse Domain Name Hijacking (RDNH) should be judged as an individual case to be decided on its own merits and in the light of proper principles and the evidence adduced in the particular case for decision. Previous decisions are, of course, always interesting, but they must not be regarded as precedents to be followed slavishly and must not have priority over the facts in the instant case that is before the panellist. By the same token, panellists should approach the issue with the objectivity and independence they bring to bear to all proceedings.
The second step is to examine again the Rule giving the panellist power to decide this issue, for that sets the ambit of the power and marks the boundaries within which the panellist should make the decision. It is of course Rule 15(e) of the UDRP Rules, which provides:
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.
To my mind, the Rule makes a number of things reasonably clear (1) and they are:
(a) the panel may consider the issue of RDNH even if no request or application has been made by the Respondent for it to be considered; the use of the Rule is not contingent on the Respondent asking for a finding of RDNH. Indeed, the Rule does not provide that it is only in defended cases that RDNH arises for consideration;
(b) the Panel has a duty to make a positive finding if the grounds for it have been made out; the Rule is clearly one of those rules where “shallâ€ means “shallâ€ and not “mayâ€. Indeed , it is interesting that the Rules almost always use the mandatory “shallâ€ and that only on very few occasions is a discretion conferred by the use of the word “mayâ€; those who drew the Rules therefore knew which functions they wanted to make mandatory and the very few cases where they wanted a function to be discretionary;
(c) although the issue is usually seen as whether or not there was RDNH, the Rule actually enables the panellist to make one of two findings or even both of them. The panellist could find that the complaint is one brought in bad faith, an example of which is an attempt at RDNH. RDNH is itself defined (2) and it is defined as using the Policy in bad faith in an attempt to deprive a registered domain-name holder of a domain name. So the first finding that could be made is bad faith, where the intention is an attempt to deprive the Respondent of the domain name. But there is a second finding that may be made, namely one that the complaint was brought to harass the Respondent. That is a separate finding that may be made and where the ordinary dictionary meanings of “harassâ€, such as “tormentingâ€ apply. When either of those findings is made, the panel must then make a declaration that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding;
(d) it is a reasonable conclusion on the normal principles of statutory interpretation that those who drafted the Rules intended them to be complied with and that a finding of RDNH, or more precisely, a declaration of bad faith and abuse of process should be made where an adverse finding of fact has been made. Indeed, the Rules go out of their way to provide specifically that such declarations shall be published by the Provider of the arbitration service (3) ;
(e) a declaration of bad faith and abuse of process does not carry a penalty for an unsuccessful complainant; it does not result in an order for damages, an apology, costs or interest. It is, however, properly treated as a significant step in the proceedings and just as some respondents argue vigorously for a declaration, complainants and their advisers argue vigorously against one, as clearly they do not want to be the subject of an adverse ruling.
The final and most difficult question of course remains. When should a finding or a declaration be made?
Panellists must remind themselves that they are required to “consider (…) the submissionsâ€ before making a finding, i.e. that they should examine and weigh up the facts and the arguments in every given case before deciding whether the complaint was brought in bad faith or primarily to harass the domain name holder. In the course of that deliberation there are some considerations that might be helpful to panellists and to practitioners and parties weighing up the possible outcome of the case.
First, it follows from the above analysis that the question should at least be considered, especially in cases that are defended. Secondly, the standard of proof is the balance of probabilities and the panellist might consider applying the test of whether, having regard to all of the facts and circumstances, it probably was or probably was not the case that the complaint was brought in bad faith or to harass the Respondent. Thirdly, in doing so, the panellist must reach conclusions on motive and intention. In that regard, the presence or absence of particular facts may be of assistance to the panellist in reaching those conclusions; for example, if there were no arguable case to support the claim, rather than an arguable one, the panellist may be disposed to make an adverse finding; that was the situation in CDG v. WSM Domains – Privacy Registrations, No: FA0703000933942 (NAF Case, May 2, 2007) where there was no case presented on two of the three elements. But if the claim was simply optimistic, but arguable and certainly not reckless or irresponsible, the panellist may make a finding that this falls short of bad faith or harassment.
I tried to bring these thoughts together in the recent decision in Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. No: FA0904001255365 ( NAF Case, June 9, 2009) by analysing in detail the facts that had occurred and how they might influence the decision-making process and by concluding that “Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case.â€
Undoubtedly, panels will continue to judge individual cases on their merits and there will not be universal agreement of the decisions reached on this contentious issue. For example, another recent case, Success Bank v. ZootGraphics c/o Ira Zoot, No FA0904001259918 (NAF Case, June 29, 2009) was a case where the domain name successbank .com was registered in October 2003, when the Complainant was known as the Davis County Savings Bank. In December 2007 it changed its name to “Success Bankâ€ and in January 2008 obtained Federal registration of the SUCCESSBANK trademark. It was submitted by counsel for the Respondent that in alleging bad faith the Complainant was in effect alleging that the Respondent must have had “psychic powersâ€ and knew when it registered the domain name that, four years later, the Complainant would change its name and register the trademark. The complaint was dismissed, but there is no indication given in the decision why the panel did not go on to consider and decide the issue of RDNH.
The conclusion must be, therefore, that the power to make declarations of bad faith and abuse of the administrative proceeding is there and is ample to achieve that task. But, as with all judicial and quasi -judicial tribunals, the use and effectiveness of that procedure will always depend on how individuals come to make judgments on the facts and circumstances of individual cases.
(1) However, the panellist should always keep an open mind on submissions that the Rules have a different meaning from that suggested here.
(2) In the definitions Rule, i.e. Rule 1.
(3) Rule 16 (b)