The Rules for Uniform Domain Name Dispute Resolution Policy defines reverse domain hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, panelists are encouraged to indicate in their written opinion that the purpose of the Complaint is to harass the domain-name owner and declare a finding of reverse domain hijacking pursuant to Rule 1 and Rule 15(e). A recent WIPO panel elaborated upon what reverse domain hijacking truly entails:
“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name . . .”
See Proto Software, Inc. v. Vertical Axis, Inc/PROTO.CO, D2006-0905 (WIPO Oct. 10, 2006) (decided by a three-person panel). Therefore, the Respondent must prove that the Complainant lacked legitimate rights in its domain name, for example due to a merely generic word comprising the domain name, and that the Complainant ignored Respondent’s lack of a bad faith registration and use in order to justify a finding of reverse domain name hijacking.
Even if a Respondent is successful, what does such a finding really mean? Does it simply mean shame on the Complainant for abusing the administrative proceeding since, in fact, in order to make such a finding the Complainant must lose the UDRP proceeding? Or does it denote an actionable counterclaim to which the domain-name holder is entitled to relief, especially in light of the time and cost spent to respond to the UDRP Complaint?
The answer is simple when limited to the UDRP, regardless of whether the decision was rendered by a WIPO or NAF panel. There is no equivalent of a “counterclaim” or the opportunity to recover damages under ICANN Rules and Policy. Therefore, a finding of reverse domain hijacking offers nothing in the context of the UDRP. “Moreover, any decision made by a panel under the UDRP is no more than an agreed-upon administration that is not given any deference under the ACPA.” See Barcelona.com v. Excelentisimo Ayuntamiento De Bardelona, 330 F.3d 617, 626 (4th Cir. 2003). So, not only does the Panel’s finding of reverse domain hijacking entitle you to nothing, but a United States court of law does not even consider it when rendering its own decision regarding a domain name.
It is only within the context of the Anticybersquatting Consumer Protection Act (ACPA) that reverse domain hijacking has actionable meaning, albeit limited:
A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
15 U.S.C. § 1114(2)(D)(v). The ACPA does provide an appeal and counterclaim of sorts. However, in order to succeed on a declaratory judgment action, you must show that you are the domain name registrant; that the domain was suspended, disabled, or transferred under the registrar’s policy; you have notified the alleged mark owner who prompted the suspension, disabling, or transfer; and that your registration or use of the domain is now unlawful, pursuant to the Lanham Act. See Barcelona.com v. Excelentisimo Ayuntamiento De Bardelona, 330 F.3d 617, 626 (4th Cir. 2003). Nowhere does it mention monetary damages or any statutory penalties. Reverse domain hijacking simply gives you back what was rightfully yours, without any provision for reimbursement of the costs you endured by being subjected to the domain name dispute.
The only ACPA provision that mentions damages in the same vein as reverse domain name hijacking, states:
If a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney’s fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant.
15 U.S.C. § 1114(2)(D)(iv). This provision, however, is inapplicable to registrants (rather it is intended for registrars) and useful in limited situations.
Thus, the moral of this all is that as a Respondent to a UDRP Complaint you should not waste anymore time or money to assert a reverse domain name hijacking claim in your UDRP Response. In fact, given the word and page-length restrictions of both WIPO and NAF, don’t even waste any valuable space to make such a claim. It doesn’t get you anything. Moreover, unless you need instant relief and want to essentially “appeal” the UDRP decision vis-a-vis the ACPA, your efforts are likely better spent on lobbying to change ICANN’s UDRP Rules or the ACPA. Until reverse domain hijacking can reimburse your costs or entitle you to statutory damages, your best use of resources and outcome is to retain your domain name by successfully responding to the UDRP Complaint.
Ultimately, until legislation is enacted or decisions are rendered that provide meaningful relief for those on the receiving end of a threat letter, UDRP, or ACPA lawsuit, prevailing on the merits may be the best case scenario. That said, relief may be on the horizon. A recently filed response to a trademark infringement lawsuit includes a counterclaim for harrassment. Depending upon how this lawsuit unfolds, a harrassment claim may become a viable option and response to whay may be an overzealous trademark owner.
Source: Brian Hall writing for DomainNews.com - March 11th, 2008