Why Reverse Domain Name Hijacking needs to be a Real Penalty and the Most Comprehensive List of RDNH cases

The panel in Rick Schwartz’s well-publicized SaveMe.com case slapped the complainant with a deserved finding of Reverse Domain Name Hijacking (RNDH). Though Rick was vindicated by the finding, the outcome is still unsatisfying because there is no consequence to the Complainant for being found guilty of Reverse Domain Name Hijacking.

Reverse Domain Name Hijacking is the Rodney Dangerfield of the UDRP – it gets no respect.

What is the penalty to the Complainant for being found guilty of Reverse Domain Name Hijacking? There is no penalty.

Where can one find a list of other RDNH decisions? There is no comprehensive list of RDNH decisions.

A RDNH finding means that the Complaint was brought in bad faith as an abuse of the UDRP process in an attempt to seize without justification a commercially valuable domain name. If a large company wants to seize a valuable domain name, even if it has no rights to it, it can turn to its in-house counsel and for the trivial cost of the $1,500 filing fee take a shot at seizing the domain it covets by filing an abusive UDRP. Due to the unpredictability and lack of uniformity of the supposedly Uniform Dispute Resolution Procedures, the company has a chance at winning a domain that may be worth hundreds of thousands of dollars to it. If it loses, there is no downside. The odds are good that it will avoid a finding of RDNH even if such a finding is well-deserved, but even if the company is found guilty of RDNH there are no consequences.

Rick Schwartz, after his victory, is allowed to keep the saveme.com domain. That’s all he gets. He will receive no compensation for the dozens of hours that he devoted to the response, nor for his legal fees and filing costs.

As Rick can attest, and as I can as well, even more costly than the dollars spent in defending against an abusive complaint is the hours of effort that goes into preparing the response, and the stress and anxiety that comes from knowing that one’s legitimately registered, and often very valuable, domain has been put in jeopardy. The time and effort required is immense, as you have to respond to multiple allegations and it is not easy to prove a negative – namely that when you registered the domain name that you were not attempting to target the Complainant. Many domain owners are individuals or small-business owners who must personally devote hours to working on the response, time that would have been better spent on one’s business or with one’s family or friends.

Complainants may leisurely spend months preparing a Complaint, but a Respondent is required to file a response within 20 calendar days. Your attorney could be in a crunch time on a case, at a conference, or on vacation and unable to give immediate attention to the Response. Similarly you might be swamped with work or on vacation. From personal experience, I can say that each UDRP I have had to defend has greatly interfered with both my work and my family time. In almost every case, filing a response is a stressful, last-minute scramble to beat the response deadline.

The only thing standing in the way of a company carelessly deciding to toss some pocket change at an abusive domain filing, with all the burden that filing places on a domain owner, is that the Complainant risks being found guilty of Reverse Domain Name Hijacking. Yet this is a toothless deterrent. A RDNH finding is a meaningless slap on the wrist, lacking in any consequence to the complainant.

Many people involved in the UDRP process have called for the Reverse Domain Name Hijacking finding to carry a significant penalty, among them Atty. Karen Bernstein, “I think it should be attorney’s fees and arbitration fees. There has to be some sort of deterrent to stop the filing of these frivolous cases”, Elliot Silver, “In my opinion, a company should have some sort of penalty for filing a UDRP that is determined to be RDNH. If a financial penalty can’t be given, perhaps a company found guilty of RDNH should be precluded from filing a UDRP for a year” and Andrew Allemann, “Put some teeth into Reverse Domain Name Hijacking. Reverse Domain Name Hijacking (RDNH) doesn’t have any financial penalties. Add some.”

The UDRP provides a remedy for trademark holders harmed by abusive domain registrations. But there is no remedy currently for domain registrants harmed by attempts at Reverse Domain Name Hijacking.

Rick has done more than anyone else to draw attention to an RDNH attempt. But he is not alone in having faced an attempted RDNH.

Many valuable domains have been targets of RDNH. These include a two-letter domain, DW.com, and country and city domains, including Mexico.com, NewZealand.com and StMoritz.com. Generic domains include Rain.com, Aroma.com, Decal.com, Hero.com, Mess.com, Ode.com, Prom.com and recently Elk.com. Many three-letter acronym domains have been targets of RDNH, but so have more obscure domains such as TheFetishFactory.com and domains in other gTLDs such as scubadiving.biz and downunder.travel.

It is difficult to find information on RDNH case because as far as I know, nowhere does there exist a complete list of RDNH cases. The time has come to remedy that.

WIPO’s own list of RDNH cases decided at WIPO is inaccurate and incomplete, listing only 32 decisions of which only two are since 2006. Perhaps they had an intern research RDNH cases back in 2006 and never bothered to update the list except for a couple of isolated cases when it was brought to their attention.

One reason why a complete list of RDNH cases does not exist is that it is very difficult to identify RDNH cases. Neither WIPO nor the NAF appear to track or identify RDNH decisions. WIPO’s and NAF’s summary reports on the outcome of UDRP cases do not even identify whether the panel made a RDNH finding. The summary information will only state “Complaint Denied” and will make no reference to whether a RDNH finding was also made. It is as if both WIPO and the NAF want to bury this information.

One has to review every denied complaint to determine whether a finding of RDNH was also made. Since panels do not use standard language in making a RDNH finding, one cannot perform a search on UDRP decisions for a certain phrase or group of phrases and be confident that one has found all the decisions.

I have spent many hours working off-and-on over the past couple of years trying to assemble a list of all RDNH cases. In honor of Rick’s victory, I am publishing the results now.

Below is a partial compilation of all Reverse Domain Name Hijacking decisions on gTLD domains to date. Because of all the difficulties in identifying RDNH decisions, the list below will necessarily be incomplete. My hope is to make this a crowd-sourced list. If any of you know of any RDNH decision that is not listed below, please submit it through the comments or email me directly.

The list contains over 100 RDNH decisions (thanks very much to Elliot Silver for sharing his research). These decisions collectively represent hundreds of thousands of dollars in legal fees and arbitration fees, and countless hours of effort,  that domain owners had to spend to fight these abusive complaints.

One of the curious things about RDNH findings is that even though the penalty is meaningless, panels are typically very reluctant to make a RDNH finding.  Many panels bend over backwards to give the Complainant the benefit of the doubt so as to avoid making a RDNH finding, which is quite frustrating when many panelists refuse to give domain owners any benefit of the doubt and are willing to order domain transfers on the flimsiest speculative evidence (for examples see the 2009 UDRP Wall of Shame.)

Even in cases that would seem clear-cut to the rest of us, panels don’t find RNDH. For examples, one can cite Cite.com (panelist too lazy) and Imagem.com (complainant’s attorney too confused) or LaFrance.com (complaint brought to harass but complainant didn’t use a lawyer), all written up by Andrew Allemann, or the UDRP case on the 18-year-old domain LMC.com, written up by attorney Bret Moore.

Many panels don’t even address the question of Reverse Domain Name Hijacking even if the facts clearly seem to warrant it.  There are numerous UDRP complaints where the complainant did not begin using their trademark until many years after the disputed domain was registered which should always be a clear-cut case of Reverse Domain Name Hijacking.  Yet often in these cases the panel will simply deny the complaint but won’t bother to make a finding about whether the complaint was an attempt at RDNH.  The experienced panelist the Hon. Neil Brown QC states that a panel is required to make a finding of RDNH if the circumstances warrant it, whether or not the respondent requests such a finding and even if there is no response.

The list below therefore likely represents only a small fraction of the complaints that deserved to be identified as abusive RDNH attempts.

My goal is that one day the finding of Reverse Domain Name Hijacking will carry with it a penalty of sufficient size to be an adequate deterrent. If so, the domain industry will be subjected to fewer bad faith attempts by companies that use the UDRP as a casino where they roll the dice and the prize is your domain name.

The Internet Commerce Association (ICA) is pushing for comprehensive UDRP reform. Putting teeth into a guilty finding for Reverse Domain Name Hijacking is one of our priorities. If you wish to better protect your domains, I invite you to learn more about the ICA by visiting InternetCommerce.org or by contacting me.

The RDNH table below is no longer being maintained.  An updated list of RDNH decisions identified so far is available at RDNH.com.