Ronald E. Paul, the former U.S. representative from Texas and Republican presidential hopeful, had engaged in reverse domain name hijacking when he pursued the registrant of the ronpaul.org domain name in arbitration proceedings, a panel at the World Intellectual Property Organization's arbitration and mediation center concluded May 11 (Paul v. Domain Capital Inc., WIPO, No. 13-371, 5/11/13).
Domain Capital Inc. had registered both ronpaul.com and ronpaul.org. When Paul approached the company about acquiring ronpaul.com, the respondent offered to sell it or to give him ronpaul.org domain for free. Instead of taking ronpaul.org domain, Paul filed two actions pursuant to the Uniform Domain Name Dispute Resolution Policy.
A three-member panel concluded that, with respect to ronpaul.org, Paul had engaged in reverse domain name hijacking.
“Complainant was offered the Domain Name for no charge, with no strings attached, as shown in a letter annexed to its own Complaint,” the panel observed. “Instead of accepting graciously, Complainant brought this proceeding in bad faith.”
“You have to have your facts in order.” --Arbitrator Joanne Ludovici, McDermott Will & Emery
Reverse domain name hijacking findings are relatively rare in UDRP proceedings, but not unheard of. A few days later, a different WIPO panel ruled sua sponte that another trademark owner had also engaged in reverse domain name hijacking. Weyer v. DomainSource.com Inc., No. 13-510 (WIPO, May 14, 2013).
Reverse domain name hijacking is akin to trademark bullying, Joanne Ludovici of McDermott Will & Emery, Washington, D.C., told BNA. Despite a lack of damages, a finding of reverse domain name hijacking can impair a brand owner's reputation, she said.
As a result, brand owners should carefully consider the merits of a UDRP claim before pursuing it, just as they should carefully consider all other claims, Ludovici said.
“You have to have your facts in order,” she said.
However, Ludovici said that there are winners and losers in all UDRP cases, so trademark owners should not be deterred from bringing a potentially meritorious claim.
“WIPO, NAF, and the other UDRP providers generally get it right,” she said.
Text is available at http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0371.
Opinion in Weyer proceeding is available at http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0510.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).