What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions. The controlling factor is abusive conduct, either of process as a means of achieving the proscribed end or “brought primarily to harass the domain-name holder.” Rule 15(e).
What it takes to satisfy the burden of establishing RDNH can be seen through two lenses, namely majority and dissenting decisions in three-member Panels composed of panelists of opposing views; and panelists prepared to find RDNH even if the relief is not requested. I think there are essentially two views. View 1 panelists demand that respondents carry the burden of proof sufficient in amount to establish abuse of the proceedings by a preponderance of the evidence as opposed to simply establishing a prima facie case; since complainants have no evidentiary burden of rebuttal they are more likely to receive the benefit of the doubt. View 2 panelists are more inclined to draw inferences from a record that establishes a prima facie case, and if the inferences support bad faith then the burden shifts to complainants to explain why they should not be charged with RDNH. (For complainants who lack priority in the marketplace the UDRP is not the proper vehicle; and neither may there be a statutory remedy).
In essence, RDNH counts as a counterclaim (although without the remedial bite under the Anticybersquatting Consumer Protection Act of damages and attorneys fees against overreaching trademark owners, which incidentally has occurred in a number of federal cases.) Respondents have the initial burden of proof; either they if they appear or the evidence in the record if they default has to present a prima facie case of overreaching.
If authority is needed for insisting that complainants carry the separate burden of going forward it is found in Rule 3(b)(xiii), the certification rule: “this Complaint is not being presented for any improper purpose.” Credibility plays a role here; is it possible to have signed the complaint when it is obvious that the certification is contradicted by weakness of the trademark, the timing of the complaint or complainant's lack of priority?
The majority Panels in both Nilson Group AB v. Domain Admin, Frontline Media, D2016-0334 (WIPO May 27, 2016) (<feetfirst.com>) and Impossible BV v. Joel Runyon, Impossible Ventures, D2016-0506 (WIPO May 22, 2016) rejected RDNH in language that suggests Complainants were not tasked with having to justify their complaints notwithstanding the prima facie case of bad faith in filing them. The dissenting panelists (concurring on dismissal of the complaint) do not disagree with the proposition that an “unsuccessful case is certainly not enough, without more, to justify such a finding”—“[e]ven an over-optimistic case will not normally justify a finding of RDNH, as many trademark owners, when they see a domain name similar to their trademark, will be justified in making a claim and may well be motivated solely by a legitimate desire to defend their trademark"—but both of panelists make a strong argument for RDNH that I think is compelling.
In Impossible, the dissent states that he is “conscious that the Panel majority do not regard the issue of RDNH as being of any great relevance in the context of this dispute. I fundamentally disagree” because
this was a case that should never have been launched and it is crucial that complainants and their advisers have it made very clear to them that in a system such as this where many respondents do not bother to respond, it is important that panels can rely upon the certificate at the end of the Complaint.
But, where the certificate is fundamentally undermined by on the one hand omitting evidence and on the other failing to undertake minimal research to confirm a respondent’s status, its conduct is inexcusable:
[I]n this case Complainant was corresponding with Respondent from October 2015 to January 2016 seeking to purchase the Disputed Domain Name from Respondent. In the course of that correspondence Complainant (through its CEO) acknowledged Respondent's interest in "Impossible-formative" names. Moreover, it was told in an email of October 27, 2015 that Respondent had a registered trademark covering its usage.
In other words, “[t]here was thus quite a lot of basic information upon which Complainant could have based a simple investigation, but the Complaint mentions nothing. It does not even mention Respondent's claim to a registered trademark. The email in question was excluded from the selection annexed to the Complaint.” Credibility issues should be important because they support or undermine a party’s certification of its pleading—“I am shocked at the level of selection and do not understand how the Complaint's certificate as to the completeness of the evidence could have been signed” (credibility works equally against respondents in arguing for rights or legitimate interests). The dissent concluded:
I'm afraid that I simply cannot believe that a trademark search would not have been carried out to check Respondent's claim. And one can only speculate as to why all reference to that trademark was omitted from the Complaint.
The dissent in Nilson, the dissent was taken aback because “the Complainant was represented by a firm holding itself out, by virtue of its name, to be an expert in the field,” implying either that this expert proceeded knowing the weakness of its client’s position or is not the expert it believes itself to be. Nevertheless, taking the expert at face value the “Panel is therefore entitled to assume that some enquiries were made as to whether the case was justified and whether there was any evidence to support it.” These expectations, however, were disappointed:
No such investigation, thorough or otherwise, could conceivably have justified any such conclusion being reached. The Complainant would or should have noticed that its trade mark was only applied for some months after the Respondent had acquired the domain name and 8 years or so after the original registrant of the domain name had registered it. Even a layman should have realised that this was no foundation on which to bring a complaint, especially one where the Complainant makes a bare allegation of bad faith against a domain name registrant who seems to have done no wrong.
It’s important, I think, to recognize that these expressions of disenchantment with complainants and representatives is not confined to “ornery” dissenters (actually, not ornery at all in Nilson and Impossible but veteran panelists), notwithstanding the four panelists who declined to go there in those two cases. View 2 decisions include Nedbank Limited v. Gregg Ostrick, GNO, Inc., D2016-0515 (WIPO May 18, 2016) (<greentrust.com>) and Coolside Limited v. Get On The Web Limited, D2016-0335 (WIPO April 26, 2016) (<trtl.com>) (both unanimous); single member Panels include DEGANI DESIGNS, LLC v. Chris Morling / Dot Zinc Limited, FA1603001664293 (Forum April 13, 2016)(<chooze.com>) and Dreamlines GmbH v. Darshinee Naidu / World News Inc., D2016-0111 (WIPO March 8, 2016) (<dreamlines.com>).
The other major support for View 2 are decisions by panelists prepared to declare RDNH even in cases in which appearing respondents do not request RDNH (iPayment, Inc. v. Domain Hostmaster, Customer ID: 83314393006017, Whois Privacy Services Pty Ltd / Kwangpyo Kim, Mediablue Inc., D2015-1014 (WIPO September 2, 2015) (<ipayments.com>) —“Although Respondent has not specifically asked for this relief, the Panel is entitled to pursue this inquiry if circumstances warrant)—or defaulting respondents (Cyberbit Ltd. v. Mr. Kieran Ambrose, Cyberbit A/S, D2016-0126 (WIPO February 26, 2016) (<cyberbit.com>)—“the deficiencies [of proof] must have been obvious to anyone remotely familiar with the Policy”)—and complainants are nevertheless declared to have used the UDRP in bad faith.
In Cyberbit, the Panel (the same panelist who dissented in Impossible) held that “paragraph 15(e) of the Rules makes clear [that] such a finding is not dependent upon a request from the Respondent. If abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it.” The View 2 panelists demand (whether or not complainants are challenged) that they respond to a prima facie showing of abuse by marshaling the factual basis for believing that their complaints could succeed; and that their complaints were not launched to deprive registered domain name holders of their domain names.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.
