By Igor Motsnyi, UDRP panelist, URS examiner & Victor Garcia, Director & Co-owner, HSS IPM
When it comes to UDRP’s, many complainants are not aware of the applicability of the Reverse Domain Name Hijacking (“RDNH”) measure.
The UDRP Rules define RDNH as follows:
“Using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”
Mere lack of success of a UDRP complaint is not in itself sufficient for a finding of RDNH. Therefore, additional factors must be involved, for instance:
- the disputed domain name was registered by respondent long before the complainant obtained relevant rights in the trademarks mentioned within the UDRP
- the complainant’s attorney or legal representatives did not take into consideration established UDRP panel positions set out in WIPO Overview 3
- complainant tried to purchase the disputed domain name before filing the complain
- complainant filed the complaint without having any plausible basis for establishing, in particular, bad faith registration and use.
- complainant’s failure to disclose that a case is a UDRP refiling.
See clause 4.16 of the WIPO Overview 3.0. https://www.wipo.int/amc/en/domains/search/overview3.0/#item416
There are no penalties (financial or any other) for complainants found guilty of attempted RDNH under the UDRP.
A finding of RDNH may have some reputational damage for a complaint and, in particular, complainant’s counsel (if complainant is represented by counsel). It can also result in negative publicity if a RDNH case is reported.
While all of the above may seem insufficient and usually does not prevent complainants from filing weak UDRP complaints, potential complainants should keep in mind that some national laws may provide some remedies to respondents (including monetary penalties) where RDNH or an equivalent is found.
For instance, attempted Reverse Domain Name Hijacking can be a violation of the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) , see more details at https://iplegalcorner.com/new-standard-for-reverse-domain-name-hijacking/ and http://www.circleid.com/posts/20181213_the_hidden_perils_of_filing_a_baseless_udrp_complaint/#ref35 .
It is also worth noting that another ICANN domain name dispute resolution mechanism URS (Uniform Rapid Suspension) provides sanctions for abusive complaints:
- In the event a party is deemed to have filed two (2) abusive Complaints, or one (1) “deliberate material falsehood,” that party shall be barred from utilizing the URS for one-year following the date of issuance of a Determination finding a complainant to have: (i) filed its second abusive complaint; or (ii) filed a deliberate material falsehood.
- Two findings of “deliberate material falsehood” shall permanently bar the Complainant from utilizing the URS. See par. 11.4 and par. 11.5 of the UNIFORM RAPID SUSPENSION SYSTEM (“URS”), https://www.icann.org/resources/pages/urs-2014-01-09-en .
Until now, however, there have not been any findings of abusive complaints in URS proceedings.
While it has been the subject of much discussion, it remains to be seen whether penalties will be introduced for RDNH in the UDRP system. As financial sanctions may be difficult to enforce, a more likely form of sanctions would be a similar set up to those currently available according to the URS mechanism.
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