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Let’s add these 2 questions to UDRP complaints

It would avoid a lot of reverse domain name hijacking findings.

Reverse domain name hijacking graphic

There are two common things I see in UDRP filings that trip up Complainants and often end in findings of reverse domain name hijacking (RDNH).

  1. The Complainant files a UDRP against a domain name that was registered by the Respondent before the Complainant existed or had trademark rights.
  2. The Complainant refers to a case involving Octogen Pharmacal Company, Inc, or other cases that argue “retroactive bad faith.”

The latest example is Kevac S.r.l’s filing for the domain name Kevac.com. At best, it had weak arguments for a common law trademark that pre-dated the domain registration. It also referred to the retroactive bad faith cases. While some panelists agreed with retroactive bad faith a long, long time ago, the argument has been widely panned since then.

Kevac lost the UDRP and was found to have engaged in reverse domain name hijacking.

Reverse domain name hijacking is bad for the Complainant. It wastes time, money, and legal resources and the company is labeled a reverse domain name hijacker. It’s also bad for the domain name owner, who must pay to defend the case.

Many RDNH cases could be avoided if the UDRP form added two questions to the submission.

  1. Does your trademark pre-date the Respondent’s registration of the domain name, or is there a good reason the domain name owner would have known of your brand prior to registering the domain name?
  2. Do you cite the Octogen case?

If the answer to the first question is no or the second one is yes, the UDRP provider could explain that the case is probably weak and might result in a reverse domain name hijacking finding.

This would have caused Kevac to think twice before filing its dispute, even if it had already been warned by the domain owner’s attorney.

In the instant case, Kevac was represented by LS LexJus Sinacta and the domain owner was represented by Muscovitch Law P.C.

 

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  1. Konstantinos Zournas

    What? And how will attorneys make money with doomed complaints? And how will companies steal domains when the owner doesn’t respond for some reason or if you get a bad panel?
    My god. People have no respect for stealing sobs.

  2. David Michaels

    This quote from the decision recognizes property rights in domains:
    “As noted in WIPO Overview 3.0, section 3.1.1, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner.”

    Still, every domain owner should read section 3.1.1 a few times.

    In this case, Kevac is not a very distinctive mark because it is a surname and the domain was registered years before the trademarks were applied for, so the complaint was bound to be a RDNH.

    Kevac is a surname in Canada, the USA, Sweden, Croatia, Serbia, and Slovenia. I am surprised that complainant was able to get a trademark for the name.

    See the surname mapping app:
    https://forebears.io/surnames/kevac

  3. Dag

    Yes, much of the problem relates to trademarks that should not have been granted in the first place and are then used as weapons against domain owners.

    For true reform, look to the root of the problem.

  4. bizstarz

    Those two questions, or similar should be added. But an equal or even better deterrent would be if someone loses a UDRP and is found to have engaged in reverse domain name hijacking, they should be ordered to pay all of the defendant’s reasonable fees, costs and expenses, plus the option of an additional amount for punitive damages if the case is deemed exceptionally egregious, etc. In fact, to make it an even better deterrent, make it so that attorneys who file knowingly bad faith UDRP cases also risk being sanctioned and ordered to pay damages. Implementing these relatively easy to make changes would likely reduce RDNH cases by over 90%.

    • Tommy Boy

      And likewise on the flip side should not the respondent have to pay all of the complainants losses fees and damages if the name was registered in bad faith? Be careful what you wish for

      • TB

        Remember folks the vast majority of claims made under the udrp have been legitimate complaints resulting in the transfer of the domain. I’m afraid there are a few bad actors in every sector! Lawyers included

      • bizstarz

        Sure why not? That’s like saying don’t report it to the police if someone steals your car because you could be arrested and put in jail if the person convinces the police that you actually stole the car.

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