For a classic UDRP lesson, we can open our books to the complaint filed over <nuvotv.com> and <nuvotv.net>. This is a lecture on only hiring a counsel who is specifically experienced in domain name enforcement.

The UDRP complain was denied – why?

This UDRP complaint failed because there was no element of bad faith registration.

According to the text of the complaint, “the disputed domain names were registered by the Respondent in July 2008. The Complainant rebranded under the NUVO TV mark in July 2011. There is no evidence in the record suggesting that the Complainant’s intentions were publicly known until the latter half of 2010, and no plausible explanation has been offered as to how the Respondent when registering the disputed domain names in July 2008 could have foreseen this development.”

A counsel with experience in domain name enforcement would not have tried to pursue domain names that were registered before any trademark rights were established. As the decision notes, in this sort of situation, “the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent rights.”

Why wasn’t the complainant guilty of reverse domain hijacking?

The panelist declined to find the complainant guilty of reverse domain hijacking but gave no real explanation for his decision. He just state that “[w]hile the Panel has determined based on the facts and circumstances before it that the Complainant has failed to meet its burden of proof with respect to the third element of the Policy, the Panel is not persuaded from the totality of the record that the Complainant acted in bad faith in invoking the Policy in this case.”

I disagree with this finding and feel that it only gives a free pass to companies and their counsel who fail to understand the UDRP before causing undue stress and the expense of time (and perhaps legal fees) for innocent domain owners.  In my day-to-day work I deal with a lot of disreputable and unethical cybersquatters, but every once in a while I come across someone who has a good justification for their domain, and, in those instances, I advise clients to either negotiate a purchase of the domain or simply back off entirely.

For some reason, in this case, the complainant and its counsel decided to barrel ahead. Perhaps they wanted to use the threat of a filed UDRP complaint as leverage to bring the respondent to the bargaining table. In the end, they didn’t get what they wanted (the domain name), but they did get off easy with the panelist by avoiding the label of a reverse domain hijacker.

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
High Burden For Reverse Hijacking Maintained

One thought on “High Burden For Reverse Hijacking Maintained

  • September 2, 2014 at 11:56 am
    Permalink

    Steve,

    I’m glad that you highlighted that this UDRP was unjustified and deserved a finding of RDNH.

    I find a blatant double standard among UDRP panelists when it comes to making a finding of RDNH. Many UDRP panelists will find bad faith intent on the part of the domain registrant when 3rd party advertising links appear on a generic domain under circumstances where the domain registrant was not aware of which ads were appearing and had no role in selecting those ads.

    Even more blatant are cases where bad faith on the part of the domain registrant was found when the domain registrar placed a landing page on the domain for their own benefit without explicit authorization of the domain registrant, and the domain registrant was found to have acted in bad faith and lost a valuable generic domain as a result. The Ovation.com decision is one example.

    Yet when a Complainant makes a filing alleging bad faith on the domain registrant without any evidence of such bad faith in order to abuse the power of the UDRP to seize a domain name, and forces the domain registrant to go to the trouble and expense to respond, then in those circumstances a Reverse Domain Name Hijacking finding is deserved.

    In this case, the domain name was registered well before the Complainant could claim any trademark rights in the mark, so the Complaint was abusive and doomed to fail.

    Unfortunately, even though the Complainants are clearing acting with bad faith intentions by bringing Complaints without adequate evidence, far too many UDRP panelists show extreme reluctance to make an RNDH finding.

    Blogs such as DomainNameWire and TheDomains are full of posts questioning why UDRP panelists fail to make RDNH findings in cases where it is clearly deserved.

    There is also an inequity in the remedies under the UDRP. Covetous companies are targeting valuable non-distinctive domains. The penalty for losing a UDRP is the loss of a potentially valuable generic domain. The owner of Ovation.com purchased the domain for tens of thousands of dollars and lost it because of links on a GoDaddy landing page.

    Yet when a Complainant files an abusive UDRP complaint, even in those rare circumstances where they are found guilty of Reverse Domain Name Hijacking, there is no actual penalty, and therefore no deterrent.

    At the root of these inequities, in my view, is the bias produced by Forum Shopping. The customers of the Dispute Providers are the Complainants, not the domain owners. It is the Complainant who selects the Dispute Provider, and determines which dispute provider receives payment for handling the dispute.

    The financial incentive for the Dispute Provider is to keep their customers, the Complainants, happy. A more balanced approach would give the domain owners equal say in selecting the Dispute Provider.

    The bias produced by Forum Shopping is compounded by the bias that results when Dispute Providers accredit active Trademark attorneys who primarily represent Complainants as Panelists. This is similar to a system where prosecutors concurrently act as judges. When an attorney is advocating a certain position on behalf of a Complainant in one dispute, one would be naive to believe that he/she would take an impartial view of that same position when reviewing it as a panelists in another dispute.

    The UDRP serves a function is enabling the transfer of blatant cybersquatted domains to the TM owners. Unfortunately its implementation is quite flawed and introduces biases into the process, that can create substantial harm, perhaps even greater than the good that it does.

    Reply

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