REVERSE DOMAIN NAME HIJACKING: Fight against powerful (Reverse Cybersquatting)

The filing of cybersquatting lawsuits began as a defensive strategy to combat menace of cybersquatting. These lawsuits is being used as a way of bullying innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.

Paragraph 15(e) of the UDRP Rules empowers panel to declare in case the complaint was brought in bad faith, (e.g. 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. It becomes difficult to objectively quantify what constitutes subjective “bad faith,” resulting in panels often viewing parties’ factual discrepancies as indeterminable or immaterial at best. Therefore, despite its express recognition in the UDRP, reverse domain name hijacking findings are rare and based heavily on the factual circumstances surrounding each case. The decision in reverse domain name hijacking is expressed in following manner in the disputed domain name <tatamassage.com>:

In this state of the record, the Panel is not prepared to infer that the Respondent, or those behind it, must have known of the Complainant’s trademarks and adopted the Tata name because of its associations with the Complainant. Instead, the Respondent has provided credible evidence, within the constraints of an administrative proceeding of this kind, that the disputed domain name was adopted because the masseuse providing the Respondent’s massage services is known as Tata. As the disputed domain name is being used in connection with an apparently legitimate business which does not fall reasonably clearly within the Complainant’s proven rights, the Respondent appears to have rights or a legitimate interest to use the disputed domain name.”

(Tata Sons Limited v. Tata Massage, Case No. D2012-2467 of WIPO, Arbitration and Mediation Center)

In an UDRP complaint, the complainant must prove each of the following three elements of a domain name dispute. If the UDRP panel finds any one element is not met, the claim fails.

  1. The domain name registered by the respondent must be identical or confusingly similar to a trademark or service mark in which the complainant has trademark rights, either common law or federally registered.
  2. The respondent has no rights or legitimate interests in the domain name; and,
  3. The domain name has been registered and is being used in bad faith.

In Goldline International, Inc. v. Gold Line (Case No. D2000-1151 of WIPO, disputed domain name: “goldline.com”) it was held that:

  1. Decision

Complainant has failed utterly to establish two of the three elements of the Policy: that Respondent lacks legitimate rights or interests in the domain name “goldline.com”, and that Respondent registered and is using the domain name in bad faith. The Panel therefore denies the Complainant’s request that the domain name be transferred from Respondent to Complainant and declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.

A UDRP dispute can result in either of the following:

  1. The domain name being transferred to the complainant (most common result);
  2. Cancellation of the domain name; or
  3. The complaint being denied.

In case of Tata Sons Ltd vs. mmt (makemytrip) admin/ (Case No. D2009-0646 of WIPO, disputed domain name: oktatabyebye.com) the disputed domain name was transferred to the Complainant i.e Tata Sons Ltd. However, in a proceeding filed before the Delhi High Court a settlement was reached between Tata sons Ltd and Makemytrip, where Tata Sons Ltd. have acknowledged that the Makemytrip is the current owner of the domain name, oktatabyebye.com, subject to the said domain name being used in the manner as agreed. Tata Sons Ltd had won the arbitration case before WIPO but has to settle it before the Hon’ble Delhi High Court and it appears that the original owner Makemytrip had legitimate right and interest in disputed domain name.

Under the URDP proceedings the respondent can specifically request the panel to examine whether the complaint was in the nature of reverse domain name hijackings. In R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator (Case No. D2014-2041 of WIPO, disputed domain name: rvk.com) following was held:

  1. Reverse Domain-Name Hijacking

Respondent has asked the Panel to find that this is a case of Reverse Domain Name Hijacking.

“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1.

Complainant knew that Respondent registered the disputed domain name several months prior to Complainant’s claimed date of first use of its mark. Complainant must therefore have been aware that Respondent cannot have registered the disputed domain name in bad faith, since he cannot possibly have known of Complainant’s as-yet-nonexistent claim to the mark.

 

Complainant is not saved by its allegation that its trademark use began in 1992. First of all, that allegation was made only in the amended, not original, Complaint, and accordingly the original Complaint was not a good faith filing. Secondly, even if Complainant believed in good faith that its 1992 letter evidenced trademark use, it did not have a basis to believe that Respondent was aware of this letter or of any other evidence of Complainant’s alleged claim of right to the RVK mark.

Accordingly, the Panel finds that Complainant engaged in Reverse Domain Name Hijacking.

Even otherwise the URDP rules provides for considering the issue of reverse domain name hijacking independently by panellist i.e, without request from the Respondent. The Rules provide (paragraph 15(e)):

“If after considering the submissions the Panel finds that the Complainant 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.”

In iPayment, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Kwangpyo Kim, Mediablue Inc (Case No. D2015-1014 of WIPO, disputed domain name: ipayments.com) it was held:

Reverse Domain Name Hijacking

In light of the non-disclosure issues described above, the Panel wishes to consider the issue of reverse domain name hijacking. Although Respondent has not specifically asked for this relief, the Panel is entitled to pursue this inquiry if circumstances warrant.

WIPO Proceedings No Bar to Court Action:

The Uniform Domain Name Dispute Resolution Policy (UDRP) was created by the Internet Corporation for Assigned Names and Numbers (ICANN), an internet regulating body. The UDRP applies to every domain name registrant that registers its domain name through an ICANN-accredited registrar. The UDRP provides for an ‘administrative proceeding’ (eg, a WIPO proceeding) in disputes between domain name owners and trademark owners. The UDRP also explicitly provides that a UDRP proceeding does not bar a subsequent court proceeding. UDRP 4(k) states in part:

Availability of court proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you [the domain name registrant] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.

Indian court and WIPO(URDP)/NIXI(INDRP) proceedings:

In the Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd, (2004 Supp(2) SCR 465) Supreme Court observed that-

“…since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. National laws may be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN).

In the Stephen Koeing vs Arbitrator Nixi And Anr. (FAO (OS) 42/2012), Delhi High Court observed that-

  1. This Court notes that the INDRP mechanism of dispute resolution through arbitration would fall within the description of an arbitration agreement under Section 7 of the Arbitration and Conciliation Act, 1996. Therefore, awards made under the INDRP framework are to be tested in the light of the law applicable for Section 34, which means that the courts have narrow and circumscribed powers to interfere with arbitral tribunal’s determinations: if only the findings are based on patent legal errors, or contrary to terms of contract, or are so unreasonable that no reasonable man could have reached the conclusions that an arbitrator did, would interference be called for. The appellant has not been able to establish any of these elements. The award was, therefore, not liable to interference; the learned Single Judge said as much. We concur with his opinion. The appeal, therefore, fails and is dismissed without any order as to costs.

In Consim Info Pvt. Ltd vs Google India Pvt. Ltd,2010, the Madras High Court held that-

  1. The defendants 2 and 4 are unable to point out as to how the suit is barred by any law (so as to bring it within clause (d) of Order VII, Rule 11), except depending upon the Uniform Domain Names Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). But, I have already pointed elsewhere that the jurisdiction conferred upon this Court, is not ousted by the said Policy. Therefore, the case will not even fall under clause (d) of Order VII, Rule 11.

In remithome Corporation v. Samar Pupalla a/k/a Times of Money Ltd. a/k/a Times Online Money ltd (Claim Number: FA0712001124302, disputed domain name: remit2home.com> and <remit2home1.com) the National Arbitration Forum ordered that disputed domain names be transferred from Respondent to Complainant.

In the same disputed domain case of Times Of Money Limited vs Remithome Corporation & Another for identical two domain name the two judge bench upheld the single bench order that the NOIDA Court alone was the forum of choice, and that it had to be approached in the event of dispute by one or other party, to the exclusion of other courts. The domain name remit2home.com and remit2home1.com stands registered in the name of Times of Money Ltd and not transferred to remithome corporation.

OTHER Case:

In HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc (Case No. D2002-0754 of WIPO, disputed domain name newzealand.com) held that-

Reverse Domain Name Hijacking

Have those responsible for this Complaint used the Policy in bad faith to attempt to deprive the Respondent, a registered domain name holder, of the Domain Name? In addressing this question, the members of the Panel were unanimous in concluding that the filing of a complaint in the knowledge that the complaint is unmeritorious constitutes ‘use of the Policy in bad faith’ within the meaning of paragraph 1 of the Rules.

Prior to reading the Respondent’s supplementary submissions, the members of the Panel were divided on the question of reverse domain name hijacking. It seemed to some of the Panel that there might just be enough case law under the Policy (e.g. the <barcelona.com> decision) to encourage those responsible for the Complaint to hold a genuine belief in the merits of the Complaint.

 

However, having read the Response of the New Zealand Government to the WIPO Secretariat’s questionnaire referred to above, the Panel is unanimous in its view that when the Complaint was launched, those responsible for the Complaint, the New Zealand Government, were well aware that a claim to trademark and service mark rights in respect of NEW ZEALAND was baseless. Moreover, that document makes it clear that the New Zealand Government regards the protection of country names (qua country names) as being outside the scope of the Policy and does not approve of the Policy being extended to cover those country names, which are not trademarks.

There might have been scope for an argument in mitigation that the limb of the New Zealand Government responsible for the Complaint is the Ministry of Foreign Affairs and Trade whereas the limb of the New Zealand Government responsible for the Response to the questionnaire was the Ministry of Economic Development, but that argument has not been put to the Panel. Indeed, the Complainant has not responded to the allegation of reverse domain name hijacking despite the Panel’s invitation to do so. There has been no response to the Panel’s Procedural Order.

In the circumstances, the Panel has no hesitation in branding this misconceived Complaint as an abuse of the Policy, which has put the Respondent to needless expense.

The allegation of reverse domain name hijacking succeeds.

In TV Sundram Iyengar and Sons Limited v. P.A. Gordon (Case No. D2014-0814 of WIPO, disputed domain name: tvs.com), the panel did not make a formal finding of Reverse Domain Name Hijacking, however it was observed that Panel remains concerned at the decision to commence proceedings in such circumstances and the unsupported assertions contained in the Complaint.

In RPG Life Sciences Ltd. v. James Mathe (Case No. D2013-2094 of WIPO, disputed domain: rpg.com), the Panel made a finding of Reverse Domain Name Hijacking against the complainant.

The cases of following nature results in Reverse Domain Name Hijacking:

  • Complainant’s lack of right
  • Respondent’s proven right
  • Respondent’s lack of bad faith
  • Complainant’s lack of candour

 

Rajni Sinha

Advocate Bombay High Court