Reverse domain hijacking
Encyclopedia
Reverse domain name hijacking (also known as reverse cybersquatting), occurs where a trademark
owner attempts to secure a domain name by making false cybersquatting
claims against a domain name
’s rightful owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly perpetrated by larger corporations and famous individuals.
Reverse domain name hijacking is an analogue to the practice of domain hijacking
, wherein domain name registrants registered domain names containing famous third party trademarks with the intent of profiting by selling the domain names back to trademark owners. Trademark owners initially responded by filing cybersquatting lawsuits against registrants to enforce their trademark rights. However, as the number of cybersquatting incidents grew, trademark owners noticed that registrants would often settle their cases rather than litigate. Consequently, although the filing of cybersquatting lawsuits began as a defensive strategy to combat cybersquatting, such lawsuits also can be used as a way of strongarming innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.
,” 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.
In particular, WIPO panels generally find instances of reverse domain name hijacking where the complaint fails to establish that the respondent acted in bad faith, that the complainant regularly asserted its domain name rights, or that the primary purpose of the proceeding is to harass the domain name holder.
Examples of such findings include the following WIPO cases: Webpass, Inc. v. Paul Breitenbach (2010), Urban Logic, Inc. v. Urban Logic, Peter Holland (2009), David Robinson v. Brendan (2008), Decal v. Gregory Ricks (2008), Hero v. The Heroic Sandwich (2008), Poker Host Inc. v. Russ “Dutch” Boyd (2008), FCC Fomento de Construcciones y Contratas v “FCC.COM” (2007), Liquid Nutrition v. liquidnutrition.com (2007), Rohl, LLC v. ROHL SA (2006), and Deutsche Welle v. DiamondWare (2000).
Although UDRP panelists currently have no tools by which to punish abuses such as Reverse Domain Name Hijacking, such a finding might be used in a local jurisdiction where such abuses might constitute a tort such as tortious interference with contract
or an unfair business practice.
does not expressly recognize reverse domain name hijacking and often only limits defendants’ recovery to retention or transference of the domain name. It also fails to provide any remedies for victims of attempted reverse cybersquatting. However, the statute permits some monetary relief where bad faith, reckless disregard or the willful violation of a court order are involved.
Similarly, a 1975 amendment to the Lanham Act gives courts discretion in awarding reasonable attorneys’ fees to a prevailing party in “exceptional” circumstances. In attempting to define “exceptional,” Circuit courts are split as to what objectively constitutes malicious, fraudulent, or deliberate misconduct. Some courts award such fees where bad faith or baseless litigation is involved while other courts look for economic coercion or failure to reference controlling law. Nevertheless, due to the inherent animosity arising from being sued, courts generally hold prevailing defendants to a higher level of scrutiny, requiring vexatious or harassing conduct to shift attorney’s fees in their favor.
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
owner attempts to secure a domain name by making false cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
claims against a domain name
Domain name
A domain name is an identification string that defines a realm of administrative autonomy, authority, or control in the Internet. Domain names are formed by the rules and procedures of the Domain Name System ....
’s rightful owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly perpetrated by larger corporations and famous individuals.
Reverse domain name hijacking is an analogue to the practice of domain hijacking
Domain hijacking
Domain hijacking or domain theft is the act of changing the registration of a domain name without the permission of its original registrant....
, wherein domain name registrants registered domain names containing famous third party trademarks with the intent of profiting by selling the domain names back to trademark owners. Trademark owners initially responded by filing cybersquatting lawsuits against registrants to enforce their trademark rights. However, as the number of cybersquatting incidents grew, trademark owners noticed that registrants would often settle their cases rather than litigate. Consequently, although the filing of cybersquatting lawsuits began as a defensive strategy to combat cybersquatting, such lawsuits also can be used as a way of strongarming innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.
UDRP Restrictions on Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process. It becomes difficult to objectively quantify what constitutes subjective “bad faithBad faith
Bad faith is double mindedness or double heartedness in duplicity, fraud, or deception. It may involve intentional deceit of others, or self deception....
,” 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.
In particular, WIPO panels generally find instances of reverse domain name hijacking where the complaint fails to establish that the respondent acted in bad faith, that the complainant regularly asserted its domain name rights, or that the primary purpose of the proceeding is to harass the domain name holder.
Examples of such findings include the following WIPO cases: Webpass, Inc. v. Paul Breitenbach (2010), Urban Logic, Inc. v. Urban Logic, Peter Holland (2009), David Robinson v. Brendan (2008), Decal v. Gregory Ricks (2008), Hero v. The Heroic Sandwich (2008), Poker Host Inc. v. Russ “Dutch” Boyd (2008), FCC Fomento de Construcciones y Contratas v “FCC.COM” (2007), Liquid Nutrition v. liquidnutrition.com (2007), Rohl, LLC v. ROHL SA (2006), and Deutsche Welle v. DiamondWare (2000).
Although UDRP panelists currently have no tools by which to punish abuses such as Reverse Domain Name Hijacking, such a finding might be used in a local jurisdiction where such abuses might constitute a tort such as tortious interference with contract
Tortious interference
Tortious interference, also known as intentional interference with contractual relations, in the common law of tort, occurs when a person intentionally damages the plaintiff's contractual or other business relationships...
or an unfair business practice.
ACPA Restrictions on Reverse Domain Name Hijacking
The Anticybersquatting Consumer Protection ActAnticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act ', 15 U.S.C. § 1125, is an American law enacted in 1999 and established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name...
does not expressly recognize reverse domain name hijacking and often only limits defendants’ recovery to retention or transference of the domain name. It also fails to provide any remedies for victims of attempted reverse cybersquatting. However, the statute permits some monetary relief where bad faith, reckless disregard or the willful violation of a court order are involved.
Similarly, a 1975 amendment to the Lanham Act gives courts discretion in awarding reasonable attorneys’ fees to a prevailing party in “exceptional” circumstances. In attempting to define “exceptional,” Circuit courts are split as to what objectively constitutes malicious, fraudulent, or deliberate misconduct. Some courts award such fees where bad faith or baseless litigation is involved while other courts look for economic coercion or failure to reference controlling law. Nevertheless, due to the inherent animosity arising from being sued, courts generally hold prevailing defendants to a higher level of scrutiny, requiring vexatious or harassing conduct to shift attorney’s fees in their favor.