129 reverse domain name hijacking cases and counting…

Today I’d like to introduce you to RDNH.com, a site that provides a database of reverse domain name hijacking cases under UDRP.

The site is a “collaboration” between myself, Nat Cohen, and David Lahoti.

I say “collaboration” because Nat has been doing most (all) of the work and David’s UDRPSearch.com has been a key data source. As for me, my only collaboration on the project is lending the RDNH.com domain

(I just happened to own RDNH.com – it’s not something I bought because of the Reverse Domain Name Hijacking acronym).

If you take a look at RDNH.com you’ll see that we have ambitions that aren’t being fulfilled yet. We’ve actually had the site up since December with the hope of “completing” it before telling people about it. But I think it’s important to get data out there even in the site’s incomplete state.

The key resource is the table of RDNH decisions. We’ve got 129 so far and need your help. If you’re aware of any RDNH cases that aren’t on the list, please leave a comment.

We’re also expanding the table to include more information. Stay tuned.

Sorry, you can’t just take a domain because you have a business plan for it.

A California man starting a business called Joopa has been found guilty of attempted reverse domain name hijacking.

Edward Smith attempted to purchase the domain name Joopa.com for a new business (which is currently online at Joopa.tv). He first offered $500, and then upped his offer to $2,600. The domain owner wanted much more.

According to the domain owner, it was after Smith was originally rebuffed in 2011 that Smith filed an intent-to-use trademark application for the word “Joopa”. After the trademark was registered he filed the UDRP for the domain.

So here we have a case of a domain registered in 2000. A guy wants to use the domain for a business over a decade later. After he fails to negotiate a price for the domain, he turns to UDRP to attempt to hijack the domain.

It’s classic reverse domain name hijacking, and panelists Carolyn M. Johnson, (Ret.), Kendall Reed, Esq., C.Arb., and Professor David E. Sorkin unanimously agreed that the complaint was brought in bad faith.

Smith was represented by Raj Abhyanker P.C. Abhyanker runs Trademarkia.com.

Company claimed rights to domain registered in 1996, well before it started using the name as a brand.

Irvine, California eCommerce technology company Eyemagine Technology LLC has been found by the World Intellectual Property Organization to be guilty of reverse domain name hijacking.

The company, which says it started using the Eyemagine brand in 2003, filed the complaint against a construction company that registered the domain eyemagine.com way back in 1996.

The construction company has used the domain name for its construction business from time to time. In 2010 it also registered eyemagine.info, which was included in the UDRP proceeding.

Despite Eyemagine’s creative arguments as to why a domain registered many years before it started using the Eyemagine mark was registered in bad faith, the panel found against it. It also found that the complaint was brought in bad faith. Here’s how it describes the reverse domain name hijacking:

In this case, there are several indications that Complainant was acting in bad faith. Given the record, it strains credulity that Complainant did not know or should not have known that it could not establish Respondents’ lack of legitimate interests or Respondents’ bad faith registration and use for at least one of the Domain Names. The Panel, in particular, notes:

(1) For the Domain Name, the several-year gap between Respondents’ domain name registration year (1996), Complainant’s earliest filing year for its mark registrations (2009), Complainant’s earliest “use in commerce” year for its mark registrations (2003), and the year in which Complainant allegedly acquired common law rights in the mark (2003)—Complainant clearly should have known that Respondents’ registration of pre-dated any claims in the mark Complainant might have had.

(2) For the Domain Name, Complainant itself cited Respondents’ use of the mark and Domain Name in conjunction with the deck and patio construction business several years prior to any rights that Complainant purports to have acquired.

(3) To the extent that Complainant believed it might establish registration in bad faith for the Domain Name on a constructive notice theory, Complainant should have known that UDRP panels have required that bad faith be predicated on actual notice by respondent absent more evidence that the mark is famous (see WIPO Overview 2.0, paragraph 3.4).

(4) To the extent that Complainant believed it could convince the Panel to depart from requiring bad faith registration and use conjunctively—on the theory that Respondents were relying upon an initial good faith registration to use a domain name in bad faith with impunity—Complainant clearly should have known that, at minimum, it would need to bring evidence of Respondents’ abuse. The sole evidence Complainant appears to have brought is Respondents’ general unresponsiveness to the bargaining tactic of offering the same amount of money to purchase the Domain Names three times.

It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.

Eyemagine was represented by The Law Office of Darius Gleason. The respondent was represented by Perry IP Group A.L.C.

Two cases, three different view of reverse domain name hijacking.

Two recent UDRP cases show the inconsistency of how reverse domain name hijacking (RDNH) is applied.

In the first case, Intelligentsia Coffee & Tea, Inc. v. Ashantiplc Ltd, the panel found against the complainant in a dispute over Intelligentsia.com.

In this decision, two of the three panelists said it is the Respondent’s job to prove RDNH.

The majority write:

A majority of the Panel notes that Complainant provided little enough support in its Amended Complaint regarding Respondent’s bad faith that had Respondent pressed the issue, a finding of Reverse Domain Name Hijacking (“RDNH”) —i.e. a finding that Complainant was “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” —might have been appropriate.

Richard Lyon wrote a concurring decision that argued that RDNH should be found.

“In my view RDNH is a matter the Panel should consider in an appropriate case whether or not a respondent requests it,” he wrote.

Lyon goes on to explain that the purpose of RDNH decisions is not to grant a claim requested by the Respondent, but to protect the integrity of the UDRP process:

A finding of RDNH could be said to be an empty gesture. As with any statement by any panel, it has no collateral estoppel or res judicata effect in any subsequent litigation or administrative proceeding, indeed even in any subsequent Policy proceeding brought by the same party or representative. Limited though this censure may be, though, it is sometimes the only way for a panel to deter future abuse of the Policy and to remind parties and professionals who invoke the Policy of its limits, rules, and means of abuse.

So, is the majority saying that it was an abuse of the policy, but their hands are tied because the Respondent didn’t “press the issue”?

One view of this approach is that since the Policy doesn’t itself provide any criteria for it, and leaves it up to the Panel in a procedural rule (Rule 15e) – instead of the Policy itself, then the Panel should consider it as a matter of procedure. The UDRP doesn’t even mention RDNH apart from the UDRP Rules of procedure, and it is mentioned under the section of the Rules applying to the Panel, not to the parties.

Lyon’s view is similar to that of Neil Brown, who argues that a panel should consider RDNH regardless of whether the respondent specifically asks or argues for it.

The second case pitted Personally Cool Inc against Frank Schilling’s Name Administration for the domain name CoolFront.com.

In this case — unlike the Intelligentsia.com case — the respondent’s attorney asked for a finding of reverse domain name hijacking. (John Berryhill was the respondent’s attorney in both cases.)

The panel considered that the complainant wasn’t represented by counsel. Panels often give the benefit of the doubt to a complainant that doesn’t use a lawyer. For example, in a case over Imagem.com, the panel determined that the complainant was so misguided that it simply misunderstood the policy.

But the three person panel in Coldfront.com pointed out that this isn’t always an excuse — especially in this case, where the complainant was warned ahead of time by the domain owner why his case would fail:

It is true that Complainant appeared pro se, without counsel, but that is not an excuse for clear disregard for the limitations of the Policy. Rather, when there are questions about the validity of the claim – and especially where Respondent offered detailed information about why a complaint would have no merit – it is incumbent upon the Complainant to research carefully the validity of its claims, including if necessary consulting with experienced counsel.

Food delivery service guilty of abusing proceedings.

When Tarheel Take-Out, LLC filed a UDRP against the domain name Takeout.com, it was a pretty good bet that it would be found guilty of reverse domain name hijacking.

A three member World Intellectual Property Organization panel has just turned in its decision and has indeed determined that Tarheel Take-Out is guilty of abusing the UDRP process.

The panel ruled that the domain name was not similar to a mark in which the complainant has rights. The complainant left out a bunch of key details in its complaint. It originally tried to buy the domain but was told it would take a seven figure offer.

Apparently Tarheel Take-Out tried to withdraw the case, but the panel still found that the complainant was guilty of reverse domain name hijacking:

In this case, the only alleged rights in TAKEOUT.COM that could have arisen prior to Respondent’s registration of the disputed domain name stem from Complainant’s use of TARHEEL TAKE-OUT EXPRESS at the domain name tarheeltakeout.com for services rendered in North Carolina. In its trademark application, filed roughly six years after Respondent registered the generic or commonly descriptive term “takeout” as a domain name, Complainant alleges that its first use of TAKEOUT.COM occurred in 2010. Given the record, it strains credulity to believe that Complainant did not know or should not have known that it had no trademark rights in TAKEOUT.COM that could serve as the basis for this Complaint. It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.

For the foregoing reasons, the Panel makes a finding of Reverse Domain Name Hijacking.

While the Panel recognizes that Complainant attempted to withdraw its Complaint after learning that the Respondent acquired the disputed domain name for a legitimate use, the Panel does not believe that the Respondent should in the circumstances have been forced to present such evidence in light of Complainant’s previously disclosed lack of rights in “takeout.com” in combination with the commonly descriptive nature of that term. For Complainant to have brought these meritless UDRP proceedings in the first place is such circumstances and to have put the Respondent to the not insignificant cost of having to mount a defense to a baseless claim should be discouraged.