Reverse Domain Name Hijacking

[Cooper Mills DomainLawyer]

Following numerous requests we have written an article on RDNH and a suggestion for reform - What is Reverse Domain Name Hijacking ?
This is a pretty topical issue at the moment and once you read the article you can see the worrying trend...

 

[chris]

Thanks @Cooper Mills DomainLawyer -- reform is definitely needed.

As the auDRP stands, a Complainant who chooses to use the auDRP in bad faith with the hope of taking a valuable domain name without having the pay for it (in other words RDNH) there are no consequences except a finding of RDNH by the panel.

With top tier domain names only increasing in value and being more sought after, there needs to be a deterrent.

 

[DomainNames]

Following numerous requests we have written an article on RDNH and a suggestion for reform - What is Reverse Domain Name Hijacking ?
This is a pretty topical issue at the moment and once you read the article you can see the worrying trend...

Any updates from auDA or the board on policy changes to stop RNDH in Australia?

 

[DomainNames]

Another crazy RDNH claimant! http://domainnamewire.com/2016/07/19/heidi-powell-lawsuit/
"Pity the poor woman who had the gall to register her own name as a .com domain name.


I’ve seen a lot of ridiculous cybersquatting complaints filed through UDRP or the courts, but this one might top them all.


You might have heard for Heidi Powell if you’re into weight loss reality TV. She’s co-host of ABC’s Extreme Weight Loss. She came to fame in 2010.


When it came time to register a domain name, she found that HeidiPowell.com had already been registered by another woman named Heidi Powell (actually, her husband registered it for her). So she went with HeidiPowell.net, but also inquired about buying the .com. She was rebuffed.


Now Heidi Powell, the weight loss guru, is suing Heidi Powell, the innocent registrant of her own name in .com, claiming that she’s cybersquatting by owning the .com that matches her own name.


I feel like I’m in the twilight zone here.


I sure hope the fitness Heidi Powell’s lawyers Jaburg & Wilk fully advised her about the risk she’s getting into by filing this suit (pdf). If I were the defendant, I’d certainly countersue for reverse domain name hijacking and ask for $100,000. This case is as dead on arrival as any I’ve seen."

 

[chris]

Agree, this is BS. This sums it up well:

Pity the poor woman who had the gall to register her own name as a .com domain name.

 

[johno69]

All I can say is WOW, talk about screwed up.

 

[Cooper Mills DomainLawyer]

Any updates from auDA or the board on policy changes to stop RNDH in Australia?

I am raising the issue

 

[DomainNames]

I am raising the issue

Hi,
As an auDA board member and expert in domain name and IP law it is over 1 year now since you posted about it here you would do something about it.

When will auDA and the auDA Board and policy panelists etc be acting on this policy change and Dispute Panelists forced to learn about it and make rulings on it? It costs legitimate registrants significant time, money and stress.
www.rdnh.com
https://www.coopermills.com.au/reverse-domain-name-hijacking/
" What is Reverse Domain Name Hijacking ?
19 07 2016
The term Reverse Domain Name Hijacking or RDNH is becoming more prevalent as the cost and availability of valuable domain names makes them less attainable.

What is Reverse Domain Name Hijacking ?
Reverse Domain Name Hijacking (‘RDNH’) is defined by the auDRP as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”. This often takes place where the Complainant has been unable or unwilling to negotiate the purchase of a domain name from the registrant holding it. Some in the industry refer to RNDH as the process to ‘steal rather than pay’ for a domain name.

While RDNH findings remain rare in cases of genuine dispute, there are numerous authorities which provide useful insights into the circumstances in which a RDNH finding may be made.

In Futureworld Consultancy (Pty) Limited -v- Online Advice (WIPO Case No. D2003-0297), it was held that in order to prevail in a RDNH claim, the respondent “must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the complaint in bad faith”. That is, that a RDNH finding may be made if the complainant “knew or should have known at the time it filed the complaint that it could not prove that the domain name was registered or used in bad faith”.

In recent years, RDNH findings have been made where:
• The complainant failed to disclose the history and nature of its relationship with the respondent which could have distorted the Panel’s impression of the nature of the dispute (Paessler AG -v- Assured IT Pty Ltd, WIPO Case No. DAU2015-0030).

• The complainant launched proceedings following failed purchase attempts but did not disclose that the registered trade marks they claimed to own were governed by a license and misrepresented correspondence made between the parties in relation to the sale of the disputed domain (Carman’s Fine Foods Pty ltd -v- Ross Wayne Carman, Carmans Consulting, WIPO Case No. DAU2015-0041).

• The complainant omitted relevant information including that an administrative complaint to auDA about the respondent had been dismissed and that the complainant had attempted to purchase the domain name but was rejected and then sought to commence proceedings to acquire the domain name which was registered six years before it could have conceivably acquired trade mark rights (Orient Express Travel Group Pty Ltd -v- Mookstar Media Pty Ltd, WIPO Case No. DAU2015-0004).

• The complainant would have been aware that the respondent had more than a negligible business in Australia and therefore knew or should have known that it could not prove that the domain was registered in bad faith (Adjudicate Today Pty Limited -v- The Institute of Arbitrators and Mediators, WIPO Case No. DAU2012-0033).

• The complainant’s conduct was viewed as an attempt to harass and undermine the business of the respondent, and the complainant offered an incomplete history of the disputed name to the Panel (Cairns Airport Pty Ltd -v- Chris Ford (Christopher William Ford / C and C Family Discretionary Trust, WIPO Case No. DAU2013-0023).

We are seeing more cases of RDNH or attempted RDNH. The most telling evidence of this is that of the five RDNH findings that have been made since 2010 (as outlined above), all five have been made in the past three years; with three of those being made in 2015. This lends weight to the fact that there is a trend of bad faith auDRP proceedings increasing.

Reform of the auDRP
As the incidence of RNDH is more frequent, we consider that there is a justifiable basis for the auDRP to be amended to provide for some form of ‘penalty’ or consequence, where a Complainant uses the administrative process in bad faith.

This is something that has been adopted in Canada. Canada’s equivalent of the auDRP is the CIRA Domain Name Dispute Resolution Policy (‘CDRP’). Like the auDRP, the CDRP is largely based on the UDRP which provided the genesis of many administrative dispute processes around the world.

Of particular note in clause 4.6 of the CDRP is the following:

4.6 Bad Faith of Complainant. If the Registrant is successful, and the Registrant proves, on a balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay to the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect of any Registration with any Provider until the amount owing is paid in full to the Provider.

The effect of this clause is that there are costs consequences for Complainants who use the CDRP in bad faith. The concept is not new, this principal is something which is part of the Court process across most Western jurisdictions such as Australia, New Zealand, Canada and the USA.

As the auDRP stands, a Complainant who chooses to use the auDRP in bad faith with the hope of taking a valuable domain name without having the pay for it (in other words RDNH) there are no consequences except a finding of RDNH by the panel. Unfortunately, many panelists are reluctant to make these findings, presumably to avoid the Complainant being embarrassed publicly. In cases where a RDNH finding is made, there is in effect no real consequence except a public finding, so a Complainant who abuses the auDRP has nothing to lose.

If the auDRP were amended to incorporate a provision similar to that found in the CDRP, then there would be an added consequence for an abuse of process by a Complainant. There would be something to lose for a Complainant, and as a consequence a reason to think twice before making a bad faith complaint."

 

[snoopy]

I think it is a good idea reading it over.

But I guess though there is some risk if UDRP starts involving penalties though. i.e. will the trademark lobby say, we also want fines for domain registrants? I'm thinking about where this could go in say 10 years time.

 

[DomainNames]

I think it is a good idea reading it over.

But I guess though there is some risk if UDRP starts involving penalties though. i.e. will the trademark lobby say, we also want fines for domain registrants? I'm thinking about where this could go in say 10 years time.

The RDNH $5000 policy has been in place in Canada for many years and works very well. Australia needs to follow this same example ASAP.

 

[neddy]

The RDNH $5000 policy has been in place in Canada for many years and works very well. Australia needs to follow this same example ASAP.

I agree.

But Snoopy raises a good point. What's good for the goose is good for the gander.

But I guess though there is some risk if UDRP starts involving penalties though. i.e. will the trademark lobby say, we also want fines for domain registrants?

 

[DomainNames]

Well perhaps if the Australian Commonwealth Department of Communications took over the management of the Australian domain name system and the dispute handling procedures they could use a free ADR process managed by government.

No need for lawyers, panelists fees and less costs for everyone. If there was a dispute of the ruling there are also back ups with Ombudsman etc which again are no cost and more often more transparent and accountable for decisions.

Too many dispute panelists get away with bad decisions due to their own errors or lack of up to date awareness of domain names globally, fear to making RDNH rulings etc.

Not too long ago some panelists did not even know what RDNH was or monetisation or that names could be sold on the aftermarket such as Netfleet.com.au, Sedo etc within auDRP policy!

Every panelist should undergo testing to see if they really are capable of ruling on important complaints. there needs to be a course and testing procedure for them and RDNH needs to be part of that course and testing of panelists!

Many lawyers hate ADR Alternative Dispute Resolution. They want to make as much from disputes as they can even if they know there is no valid case to put forward or defend. It is very obvious some lawyers who have lodged RDNH cases would be in serious trouble had they lodged the same invalid RDNH complaints via a court where they may even be found liable for costs and a rebuke from a judge themselves.

 

[DomainNames]

It is about time this auDA and Panelist mind changed and they understood that RDNH is the big threat and wrote about it on the auDA website. I cannot see RDNH mentioned! Wake up auDA and panelists. It is time you stopped reverse domain name hijackers even if they are large companies with large law firms acting for them.

It is time for an auDA and Panelist training session on RDNH and policy update.
www.rdnh.com

https://www.auda.org.au/blog/audrp/
auDRP

Posted by Jo Lim on 20 September 2010


Lots of people would agree that one of the downsides of the Internet is the prevalence of “cybersquatting” – ie. people registering domain names that they have no right to hold, and then attempting to exploit them for commercial gain at the expense of the “real” owner.


Unfortunately, even with our relatively restrictive policy rules and registration processes, we can’t completely prevent cybersquatting on .au domain names.


The .au Dispute Resolution Policy (auDRP) is an independent arbitration process for dealing with cybersquatting cases in the .au domain. It is designed to be an easier, quicker and cheaper alternative to litigation. The auDRP is modelled on the Uniform Dispute Resolution Policy (UDRP) which applies to .com and most other gTLDs.


In August this year, we introduced changes to require electronic filing and transmission of auDRP complaints – what we call “auDRPe”. This follows similar changes to the UDRP in March – known as “eUDRP". Before these changes, people had to lodge all documentation in hard copy, often running to hundreds of pages.


Not only is the auDRPe kinder to the environment (and to the poor person chained to the photocopier!), it should also lead to quicker turnaround times for proceedings, as parties and Panelists won’t need to wait for postal delivery of documents.


Last week, in conjunction with auDRP Provider LEADR, we held training sessions in Sydney and Melbourne for auDRP Panelists and other interested people. The sessions covered the new auDRPe, and also some auDRP basics for people who are new to the process.


We revisited the development of the UDRP and the auDRP, and the key differences between the two policies. Under the UDRP, the complainant must show that the domain name is identical or confusingly similar to a trade or service mark that they own. Under the auDRP, this ground is broader to include a name, trade or service mark that the complainant owns, eg. a company or business name, or their personal name.


Another point on which the auDRP departs from the UDRP is that complainants in UDRP have to prove that the domain name was registered and used in bad faith, whereas complainants in auDRP only have to prove that the domain name was registered or used in bad faith – a much lower threshold.


A number of Panelists attended the training sessions, and there was some good discussion on auDRP policy and practicalities. We received suggestions for further improvements to the auDRP, which we will certainly look at in more detail – including the suggestion to hold more training sessions in future.


A big thank you to auDRP Panelists Philip Argy and Sara Delpopolo and LEADR case manager Alyce Andraos for their participation in the sessions. I trust they got as much out of the experience as we did!


For more information about the auDRP see http://www.auda.org.au/audrp/audrp-overview/.


If you have any feedback please direct your inquiries to blog@auda.org.au

 

[DomainNames]

No wonder people are leaving auDA or the board...Might be time for some more informed people running it with global experience on domain names, monetisation, RDNH, traffic, parking, domain name investment being the fastest growing investment market in Asia etc.

This 6 year old statement by auDA shows just how out of touch many at auDA and the old panelists etc have been. Since day one of domain names before the Australian domain name space even started people could register, park buy and sell .com domain names. Australia for too long was incorrectly ruled by auDA staff and board members with no clue and some anti domain name investor mindset. Many at auDA and even on the board years ago thought nearly all domain name owners where "cybersquaters" and names could not be sold to anyone else, one name per entity only etc

Thank goodness some new blood at auDA is making it's way into the system. The old CEO made several comments to me years ago that ".com.au names could never be to other people because it was just a license and it was not possible as auDA owned the names"... "what legitimate use could someone have for more than one name" ( this was before the rules changed after many years of effort by some more informed people and then people could register more names... thus also increasing auDA profits from more names being registered!) , this shows just how wrong some management at auDA was for so many years.... too much time wasted on giving away registrant money via foundations, parties, ICAAN junkets, award nights, first class travel, inflated costs such as massive website costs, more expensive offices etc etc etc. The old CEO wanted to build an empire for himself. Hopefully the new CEO's mindset is not the same and he listens and is far more informed and interested in just a career gravy train.

 

[DomainNames]

auDA and Panelists take note; http://dnjournal.com/letters.htm

M. Scott Donahey, who decided the first domain name case under the Uniform Domain Name Dispute Resolution Policy, acknowledged that selling domains is now seen as a legitimate business use of a domain. While many domains are still deemed to have been "registered in bad faith," it's no longer the case that holding a domain portfolio makes you immediately suspect as a cybersquatter.

Most newer panelists globally are far more enlightened about investing in domain names and some even now own a few names themselves directly or via companies or via family members !