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A Domain Lawyer’s View of Reverse Domain Name Hijacking

Domain attorney Karen Bernstein discussses (lack of) reverse domain name hijacking findings.

Earlier today Domain Name Wire published a guest article by The Hon. Neil Brown, a domain arbitrator, about how he approaches reverse domain name hijacking (RDNH) decisions.

Last week I caught up with New York domain attorney Karen Bernstein to discuss RDNH.

Bernstein has reason to be frustrated about domain disputes and the lack of RDNH decisions. She was the respondent’s representative in the case of CheapAutosInsurance.com, which DNW covered last month. In this case, an auto insurance company with a federal trademark for “Cheap Auto Insurance” unsuccessfully tried to get the domain as an upgrade to its cheap-auto-insurance.com domain name. The complainants’ actions in the case were particularly egregious.

“They did a classic data dump,” said Bernstein. “In the initial papers, they attached hundreds of snapshots of their web site dating back to 1998.” The complainant then submitted an additional submission of 800 pages. It included copies of insurance licenses in many states, none of which referred to “Cheap Auto Insurance”.

The complainant lost this case and one for CheapAutoInsurance.com (singular ‘autos’), but in neither case did the panels find it guilty of RDNH.

Bernstein said that companies believe that, just because they have trademarks, they can “swoop in and get these domain names”. She believes that complainants should pay a penalty if found guilty of reverse domain name hijacking. “There should be some sort of recourse,” she said. “I think it should be attorney’s fees and arbitration fees. There has to be some sort of deterrent to stop the filing of these frivolous cases.”

Although many people would like to see complainants that abuse the process pay a fine, the first struggle is getting arbitrators to find complainants guilty of RDNH in the first place.

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  1. Johnny says

    How about an appeal process for RDNH? If an appeals process finds the Respondent is a victim then the Complainant pays for all arbitration fees and lawyer fees.

    There are two stages of evidence submissions per UDRP by both sides. Why can’t there be an appeal process for a losing Complainant or Respondent? Loser pays others fees. That seems fair to me.

  2. M. Menius says

    I’m glad this topic is being covered. Many UDRP filings are brought without merit, and are no more than the misuse of a legitimate process in an attempt to take others’ rightful internet properties.

    Maybe Ms. Bernstein can draw attention to Reverse Hijacking. We need financial penalties and some defined standards for being able to launch a UDRP. It’s just too easy to exploit the process.

  3. Henry says

    I must say that sites like this will serve a greater role in getting the opposing attorneys in these cases to discuss the merits of the cases as they come along. Invariably their professional standing will serve to bring to light the inequities in some of the UDRP proceedings. It will also help to offer dissenting voice about some of the myriad of misinformation about domainers in the mainstream media.

    Many established powers of industry missed the boat and are using the UDRP process as a medium to wrest valuable domain names away from their rightful owners. As we discuss these topics, a lot suggestions are being bandied out there that will, in one one shape or form, adversely affect domainers. An example is the idea reported on CNBC.com under the the heading, “Internet regulator mulls cybersquatting block.” The full text can be found here: http://www.cnbc.com/id/31895266.

    One question is, what happens when a trademark involves a generic search term?

  4. Stephen Douglas says

    @ M Menius — good call dude. She did send out a NR a day or so ago bringing attention to this travesty. This attorney has some fire in her gut, that’s good!

    I think there should be a warning on the ICANN UDRP process signup that includes the terms that they could possibly pay penalties not only to the prevailing party, but also secondary fees to ICANN for the trouble. I bet ICANN will consider that position a little more closely in utilizing the RDNH policy.

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