Reverse domain name hijacking (“RDNH”) is defined as bad faith use of ICANN’s Uniform Domain Name Dispute Resolution (“UDRP”) policies and procedures with an intent to coerce a domain name owner to transfer the domain name.
ICANN is a not-for-profit organization that governs domain name registration. UDRP proceedings are arbitration proceedings where a person or business can challenge the propriety and lawfulness of another’s registration of a particular domain name. Those filing UDRP claims are called “Complainants” and the targets of the UDRP proceedings are called “Respondents.” UDRP claims are generally based on the Complainant’s ownership of a trademark and the claim that the Respondent’s domain name infringes on the Complainant’s trademark.
UDRP filings are one of the most common and effective methods of defeating domain name squatting. Domain name squatting occurs when a domain name is registered that is the same or confusingly similar to a trademark. This is done by a cybercriminal to get the trademark owner to purchase the domain name at a high price. Many trademark owners will “give in” the extortion since the price may be less than the cost of initiating litigation and/or UDRP proceedings.
On the other hand, many times, there is a legitimate dispute between parties about whether a domain name was registered in bad faith as an attempt to “extort” the trademark owner to buy the domain name. Further, there can be very legitimate arguments about whether a trademark is valid and whether a given domain name is “confusingly similar.”
This is where RDNH comes in. As a matter of practicality, it is expensive to defend against a lawsuit filed for domain name squatting or defending against a UDRP proceeding. Trademark owners know this and, as such, some trademark owners will use the threat of starting a UDRP proceeding to “coerce” a domain name owner to sell or just transfer the domain name. This, however, is a bad faith use of the UDRP rules and policies. ICANN’s rules specifically define RDNH as “using the [ICANN] Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” If a UDRP panel makes a finding of RDNH, the panel will deny the Complainant’s claim.
A good example comes from the UDRP proceeding related to the domain name Handyguy.com. See here. In that proceeding, the Respondent requested a finding of RDNH and the panel made such a finding. The facts are discussed in great detail, but here is a brief description of some of the facts cited by the panel in making its finding of bad faith by the Complainant:
- Respondent’s obtained the HandyGuy.com domain name in 2013 from an entity operating under the name “The HandyGuy of Pittsburgh”
- Respondent maintained the registration continually since it was obtained
- The Respondent began and continued to use the website/domain name for legitimate business purposes
- The Complainant acquired a domain name called TheHandyGuy.co in 2011 and acquired the domain name TheHandyGuy.com in 2018
- Complainant states that it contacted Respondent in March 2018 and attempted to purchase the disputed domain name but refused to pay Respondent’s requested $10,000 price
- A month later, Complainant applied to register THE HANDY GUY and design as a trademark
- The trademark was subsequently registered in March 2020
- Complainant’s claim to trademark rights existing before 2013 was based solely on a screenshot of its old website from 2012 simply showing a website using the “the Handy Guy” name at the top for handyman services in the Las Vegas area
- Respondent had no reason to know of Complainant’s alleged trademark in 2013
The sum of these (and other described) facts led the panel to conclude that the Complainant’s UDPR case against the Respondent was filed in bad faith. The Complainant’s claim of trademark ownership in 2013 was weak, at best. Further, bad faith was certainly indicated by the fact that trademark registration was sought only after the failed March 2018 effort to purchase the domain name.