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Recent Reverse Domain Name Hijacking Rulings Remind of Trademark Bullying Risks

Friday, May 31, 2013
By Amy E. Bivins

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).


Tread Carefully, but Cases Are Rare
There is no financial penalty for trademark owners found to have engaged in reverse domain name hijacking in UDRP proceedings, but a domain name registrant could go on to pursue a trademark owner in court for reverse domain name hijacking under the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. §1125(d).

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.

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