Reverse Domain Hijacking: Squatting through intimidation!

[slaughterbeck]

Reverse Domain Hijacking
From DNJournal.com

“Reverse domain name hijacking” is the practice whereby trademark owners assert expansive trademark rights in an effort to strip legitimate holders of their domain names. It is a phenomenon that is all too common: small company registers dictionary word domain name. Big company wants domain name. Big company files UDRP, hoping to intimidate and outspend domain name away from small company. Panelist awards domain name to big company, often without opposition from small company. Small company fumes about unfairness of domain name dispute resolution process and of life in general.

Although domain name disputes almost invariably come down to their specific facts, it is no secret that a number of large companies use their financial resources to muscle domain names away from legitimate holders. Why is this practice so prevalent? The UDRP contains no meaningful disincentive to prevent overzealous trademark owners from filing complaints. At worst, a complainant may be named a “Reverse Domain Name Hijacker.” The threat of being so branded does not exactly strike terror into the hearts of corporate giants, and as long as some overreaching claims are successful, these claims will continue to be filed.

So what is an aggrieved party to do? Well, if they have the resources, they can file an action in court to declare that their registration or use of the domain name is not unlawful under the Anticybersquatting Consumer Protection Act (ACPA). See 15 U.S.C. 1114(2)(D)(v). This provision is intended to balance the rights of domain name registrants against the rights of trademark holders, and to provide a redress against reverse domain name hijacking. See, e.g., Barcelona, com. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617 (4th Cir. 2003). The ACPA, however, only provides for injunctive relief – i.e., even if the domain holder wins, the best she can do is get her name back. See 15 U.S.C. 1114(2)(D)(v). The statute does not provide for monetary damages against the trademark holder. As a result, trademark holders have little disincentive to curb their abusive practices. Few domain name holders will have the resources to challenge them in court, and even if they do, the worst that can happen to the trademark holder is that they will spend money litigating, which is not generally much of a deterrent.

Under the current system, to contest a bad UDRP decision, domain name holders must be prepared to spend tens of thousands of dollars in court just to have a chance at holding onto their domain names, with no recognized monetary remedy against overreaching trademark holders. Sometimes, the domain name holder may agree to part with the domain name in settlement to recoup its losses, but this type of forced transaction is merely a symptom of the statutory imbalance, not the cure for it.

Amending the ACPA to allow aggrieved registrants to receive statutory damages would help to achieve a greater balance between the rights of trademark owners and domain name holders. Effecting such change would require a concerted coordination on the part of domain name holders and a considerable lobbying effort aimed at Congress. There also would likely be strong opposition to such a measure from the very parties currently engaged in reverse domain name hijacking. Another alternative would be for domain name attorneys to assert claims for monetary damages based on the creation of a new tort of reverse domain name hijacking. Although no such tort has yet been recognized, nor does such a claim appear ever to have been decided by a court. Although it may take some time for the law to catch up with technology, in general, and the practice of reverse domain name hijacking, in particular, it is incumbent upon those parties with the resources to fight back and their attorneys to change the law. Otherwise, the playing field will remain uneven and overreaching trademark owners will continue to assert bad faith claims against legitimate registrants.

 

[dgridley]

Good article, thanks for the interesting and informative read.

 

[RogueWriter]

If I remember correctly, Tiger Direct, a computer store tried to rip tiger dot com outta somebody's hands, a perfect example.

 

[BurninDragon08]

Yeah, that is pretty bad.

 

[Dave_Z]

The mess.com UDRP is another perfect example. Fortunately it backfired on the
Complainant.

However, that won't stop others from trying, especially on domain registrants
who don't really know how these things go.

 

[AdoptableDomains]

Worse yet, the respondent really has no recourse. I read one case where the respondent claimed reverse hijacking and the claimant dropped the case. The revers hijack was thrown out because that part of the policy only applies fi the case is carried through. In the UDRP, the "reverse hijack" is nothing more than a name with no penalty.

 

[TLDnetworks]

Keep in mind, UDRP/WIPO decisions are not legally binding. The legal system still takes precidence over their decisions and if the Complainant wants to push it they can file a lawsuit to push their agenda.

 

[AdoptableDomains]

Thats why I cut the odds and stick with 2 and 3 letter names...lol

I've only ever had one UDRP filed against me. It was a 3 letter .info, so that does not make you totally immune.

I fought it with a strong response filing and reverse domain hijacking claim. They negotiated a sale and they cancelled the UDRP action before it went to a panelist. However, they later won the com/net/org domains in other UDRP cases from other registrants. the claimant was a large .edu user.

 

[Riceman]

I have had a couple of UDRP complaints. In tcase it was not worth the expense to fight it

 

[TLDnetworks]

I have had a couple of UDRP complaints. In tcase it was not worth the expense to fight it

Generlly the reverse hijacking cases are brought and denied are on more generic/general terms. Luckily the panels have upheld the Respondent in alot of the cases, although I do not know if they pursued legal action after the Arbitration.

Examples;
Mexico.com
Carsales.com
Travel.biz
SFM.com

Everything can be disputed; Broad General terms , various extensions, and Generic acronyms, but they can be held on to through arbitration IF you present a well reasoned solid position.

Funny how domainers get branded the bad guys for "cybersquatting", yet companies bullying and "Reverse Cybersquatting" - Hijacking, get no bad press.

 

[AdoptableDomains]

I have had a couple of UDRP complaints. In tcase it was not worth the expense to fight it

My expense to fight the one I had was only my time. No lawyer is necessary. I just accessed the archives of past cases and cited cases that made my point or countered their point as the complainant. Even if you do a lousy job, it's better than giving in by default if you know you have a leg to stand on in the case.

 

[slaughterbeck]

No lawyer is necessary. I just accessed the archives of past cases and cited cases that made my point or countered their point as the complainant.

Essentially just what your legal counsel would have done.

 

[AdoptableDomains]

Essentially just what your legal counsel would have done.

Yes, Point being that I didn't spend money on a defense, and it can be done yourself. I see many UDRP's filed that the respondent has a shot but doesn't even file a response...Probably due to potential cost.

Past UDRP decisions (unlike court cases) are accessible online to anyone and searchable, so it's fairly easy to find and cite precendent.