REVERSE DOMAIN NAME HIJACKING: THE CONVERSE-GLIDING GAME

Previously, I had discussed domain name issues and the legal framework to protect legitimate domain name owners.

Introduction

Protection of Intellectual Property on the internet space is pivotal to continued growth and existence of businesses. Trademark similar to a domain name registered in bad faith is protected by law against cybersquatting. There are however instances where a domain name is registered genuinely and legitimately bearing similarity with an existing trademark.

Reverse Domain Name Hijacking plays out in a fashion whereby a registered trademark owner challenges a legitimately registered domain name owner in a cybersquatting action in a bid to gain the use of such domain name. Complaints are filed under any dispute resolution policy against a respondent (who is the domain name owner) seeking for the legitimate use of the domain name. While Domain hijacking/cybersquatting complaint is a defensive strategy by the victim, reverse domain name hijacking complaint is an offensive strategy against the victim.

Reverse Domain Name Hijacking (RDNH)

Like reverse psychology, reverse domain name hijacking is an offensive strategy initiated to getting a domain name from the legitimate owner. A complaint is instigated by a trademark owner personally or by using a proxy to institute a cybersquatting proceeding against a registered domain name owner on the grounds that the DN is confusingly similar, is been used without legitimate interest and in bad faith. The trademark owner will ask the panel in its relief to transfer the use of the domain name.

RDNH creates a scenario where a trademark owner intimidates a legitimate domain name owner with a cybersquatting claims in a bid to have the owner relinquish the use of the name. RDNH utilises coercion, intimidation, the threat of a lawsuit to get the DN from the registered owner. Reverse Domain Name Hijacking is also referred to as reverse cybersquatting.

ICANN defines it as “using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Techopedia explains RDNH as a situation where “… attorneys will argue that a party, usually a trademark holder, has made false cybersquatting claims against the legitimate owner of a domain. This includes various kinds of intimidation related to trademark litigation, where a person who legitimately owns a domain may be wrongly pressured into selling it to another party.”

The instances of RDNH have led to a cursory look at the trends in domain name rights, and trademark administration as applied in the Internet context. WIPO and other related bodies have made effort to curtail the menace of RDNH to avail every player in cybersphere a fair playing ground.

Paragraph 4.17 of the WIPO’s overview 2.0 manual for guidance provides that “to establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.”

Paragraph 15(e) of the UDRP rules states that “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

A respondent alleging RDNH must show compelling evidence to prove same. In the case of Domain King, an allegation of RDNH was raised and Mattew Harris, the sole Panellist held that “… neither the Complainant nor the Respondent has provided the Panel with neither a copy of any document in which that threat was made nor any subsequent correspondence. It is, therefore, unclear to what extent, if at all, the Complainant was aware what the Respondent position would be in these proceedings… In the circumstances, the Panel declines to make a finding of reverse domain name hijacking.” A respondent alleging RDNH aside providing evidence must also ask the panel to declare the complaint as reverse domain name hijacking.

Some global brands have been guilty of RDNH and they include Jaguar Land Rover, Easy Group (Owners of Easy Jet), Emerton, NedBank of South-Africa. The remarkable thing about the Jaguar Land Rover case is that no response was filed by the respondent and yet the panel found the complainant guilty of RDNH.

The reasons often canvassed by the panel for finding a complaint unworthy are: Bad faith or lack of evidence; deception or misrepresentation of facts; unnecessary delay in filing complaint; if the registration of domain name predates registration of trademark; harassment and intimidation; abuse of process by filing multiple actions in court; unjustified refilling; lack of enforceable trademark right; prior court case or violation of UDRP policy violation. WIPO will deny a complainant the transfer of name in a case of RDNH. RDNH is against economic values and against unfair competition law.

The Glide

The existing UDRP only declares the complainant culpable of RDNH and denies the transfer of the name with nothing more. However, the respondent suffers damages and incurs expense defending the complaint. If the domain name is placed under freeze during the pendency of the complaint, it implies further economic and market share loss to the respondent. There is no punitive measure or restitution framework in place to compensate.

Paragraph 2.3 of the NiRA complaint policy provides that “NiRA reserves the right not to investigate a complaint that is clearly frivolous, vexatious or abusive, or in NiRA’s opinion has been brought in bad faith.” This provision bears similitude with the paragraph 15(e) of the UDRP rules on abuse of proceedings. Furthermore, Paragraph 3.2 of the Complaint policy provides that “NIRA may place a registry server lock on the domain name(s) in question, in order to preserve the status quo whilst the investigation is pending.”

The Section 25 of the Cybercrimes (Prevention and Prohibition) Act provision on cybersquatting appears to only punish domain hijacking. The provision of Section 25 of the Act if construed strictly is inadequate to protect victims of RDNH. Furtherrmore, Section 58 of the Act definition of cybersquatting did not leave a wide room for construing RNDH. However, a liberal construction of the underlined provision of Section 25(1) appears to my mind to cater for instances of reverse domain name hijacking which states that “any person who, intentionally takes or makes use of a name, business name, trademark, domain name or other word or phrase registered, owned or in use by any individual, body corporate or belonging to either the Federal, State or Local Governments in Nigeria, on the internet or any other computer network, without authority or right, and for the purpose of interfering with their use by the owner, registrant or legitimate prior user, commits an offence under this Act and shall be liable on conviction to imprisonment for a term of not more than two years or a fine of not more than N5,000,000.00 or both fine and imprisonment.” Lastly, Section 49 of the Cybercrimes Act provides that the “Court shall order a person convicted of an offence under this Act to make restitution to the victim”. This is a corridor for compensation for the crime. Section 49(b) “an order of restitution may be enforced by the victim or by the prosecutor on behalf of the victim in the same manner as a judgment in a civil action.”

The URS procedure is the recently developed procedure by ICANN for new gTLDs. The Uniform Rapid Suspension System (URS) procedure provides for “penalties for abuse of the process by trademark holders” found to have filed their complaints “in bad faith” or “primarily to harass the domain name holder.” Gigalaw states that the “URS, provides a restrictive modus in instance of serial infringements.” The URS prevents the trademark owner from filing future complaints for a period of one-year or even permanently, contingent on the circumstances.

Conclusion

A cybersquatting/domain name hijacking proceeding is a shield to protect a victim of the crime. Conversely, reverse domain name hijacking/reverse cybersquatting proceeding is a sword against the victim.

There is no express relief under any extant legislation for damages that will be suffered for wrongly losing a legitimate domain name to a trademark owner. The provision of the Trademarks Act is grossly ineffective for domain name proceeding, considering the variance in the process of registering a domain name and trademark. Also, the Trademarks Act only protects the registered trademarks. However, it is suggested that the judgment of an administrative panel under UDRP or NDRP (NiRA Dispute Resolution Policy) should form part of the ingredient for a claim for damages in a civil action.

The effect of been declared guilty of Reverse Domain Name Hijacking hurts the corporate brand, perception, identity and reputation of the company concerned. The details of the panel’s decision are made public and outlets like RDNH.com and HallofShame.com publishes the details of companies that have been adjudged guilty of RDNH. RDNH draws negative rating, review and traction in the media, such company is brought into the limelight for infamy. In a world where commercial success is tied to the public image, RDNH can strike a bad stroke on the stocks of such enterprise.

Oloyede Ridwan is a Lagos-based legal practitioner. He is a big tech and art enthusiast. He can be reached on Linkedin