The accessibility and affordability of the UDRP process have been key factors in its success. While the policy allows brand owners to recover counterfeit domain names without the need for legal action, it has unfortunately also been misused. Spurious or seriously erroneous complaints are often viewed by panels as attempted reverse domain name hijacking (RDNH).
RDNH is an abuse of the UDRP process; the plaintiff tries his luck to wrest a domain name from a legitimate owner. The respondent in such cases often bears the cost of hiring a lawyer to defend his position. It also wastes the panel’s time. The RDNH doesn’t just lose a UDRP case, it applies where the complaint should never have been filed.
However, there are no damages following a decision of the RDNH, nor any impediment to the filing of new claims. Instead, pronouncing the RDNH is the punishment.
Reputation damage not a factor for some
Recently, there have been an alarming number of abusive complaints, including three RDNH findings in a single day in June 2021. Other recent examples of RDNH show why there have been calls within the names industry domain for more severe penalties.
In WIPO case D2021-0048, the complainant filed a complaint, which lacked evidence regarding his rights to the term “IDTC”. In addition, according to the panel, the complainant withheld important facts and made unsubstantiated claims in bad faith. The filing of such a case would clearly lead to a conviction of the RDNH.
However, the explanation of the complainant’s lawyer for filing the complaint was more blatant. He revealed that the case was filed with no intention of meeting UDRP requirements. Instead, the purpose of the filing was to “force early discovery” and “gain peak proficiency after the decision”. In addition, the applicant’s counsel saw no reason to be concerned about the RDNH’s decision against their client.
The case highlights a particularly abusive manipulation of the UDRP process. If such filings were to become the norm, it would seriously damage the trust and legitimacy of the UDRP. As an alternative dispute resolution method developed and applied out of court, recourse to UDRP for ulterior or abusive reasons poses a real threat to its existence.
Calls for a stronger position against the RDNH are not limited to members of the domain name industry. In WIPO D2020-3416, the UDRP panel hinted that it wanted more punitive weight behind its RDNH finding. The last paragraph succinctly describes the three-member panel’s frustration with the complainant’s lawyer:
In sum, the Complainant’s professional representative betrays an alarming ignorance of the UDRP and the two decades of precedent that flow from it, to the point of including the Registrar as a defendant simply for having fulfilled its non-discretionary function of registering it. ‘an available domain name. Such conduct in court would result in prompt referral and appropriate penalties for wasting the parties and court time. This special group is limited to a finding of abuse, which it willingly imposes.
So the two examples above summarize both malicious and uninformed complaints. The previous Safenames article describes the different types of RDNH and shows that there is a scale of abuse. The question then is whether cases of RDNH at the most abusive end of the scale should be subject to a more severe sanction?
Problems related to the implementation of a more severe sanction
Complainants have two remedies under the UDRP: the transfer or cancellation of the domain name. Complainants do not receive any compensation or other compensation for the damage caused by the violation of the domain name. These remedies are limited to litigation.
Therefore, when the respondent has committed an abuse, there are no further repercussions for him beyond repairing his ownership of an infringing domain. Why should an abusive complainant have to pay damages?
An argument against this way of thinking lies in the political question described above. The credibility of the UDRP process is essential for its existence. The RDNH undermines this credibility and must therefore be strongly dissuaded.
On the other hand, aggrieved respondents may already be awarded damages for the RDNH under US Consumer Protection Against Cyber Squatting law. Moreover, the UDRP is inherently meant to be a streamlined dispute resolution mechanism; thus, a claim for damages is potentially beyond its jurisdiction.
Rather than paying damages, abusive plaintiffs could be barred from filing. The procedure for settling disputes concerning “.uk” domain names contains such a provision: three conclusions of the RDNH over a period of two years will prevent the complainant from filing a request for two more years. This provision could be easily reproduced in the UDRP; but is it the complainant or his representatives who are excluded?
There is also the question of the definition of RDNH. Respondents set criteria in front of them on how to avoid losing their domain through the UDRP process (i.e. the substantive requirements set out in paragraph 4). There is no such certainty for the complainants regarding the avoidance of RDNH. Thus, if a more severe sanction is to be imposed on complainants, the RDNH must be defined and included in the policy, rather than left to the discretion of the panelists.
What the future holds
Other domain name dispute resolution policies include sanctions for the RDNH (under ‘.ca ‘, for example, RDNH can cost a complainant up to CA $ 5,000). There are also examples of ccTLD policies where complainants recover the costs of the cybersquatter (in particular “.be”). Could either of these mechanisms be introduced in the UDRP?
The UDRP will be the focus of Phase 2 of ICANN’s review of its rights protection mechanisms. We will see if this review will include a discussion on the RDNH.
Naturally, calls for harsher sanctions for the RDNH are unlikely to emanate from the community of intellectual property stakeholders. However, UDRP helps make the domain name system more secure, helping brand owners fight cyber-squatting attacks. The UDRP as a whole deserves to be protected, and that includes protection against abusive complainants.
However, the doctrine of the RDNH, as it stands, is not sufficiently predictable. The circumstances under which a panel will find RDNH must first be solidified. Only then should changes be made to the sanction for such findings.