4.2 When a Finding of RDNH is Appropriate
RDNH can take many forms. The website, RDNH.com tracks RDNH cases and categorizes them by type. There have been over 500 RDNH cases to-date. For example, there are so-called “Plan B” cases, i.e. using the Policy after failing in the marketplace to acquire a disputed domain name TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990). There are “selling price gripe” cases such as Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, where the Complainant’s only real complaint was the Respondent’s selling price. A species of this kind of case is where the Complainant commences a UDRP to increase leverage in negotiations. This has been called a “highly improper purpose” in BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.There are “fatally weak” cases such as Zenni Optical, LLC. v. DNS Administrator / Cykon Technology Limited, WIPO Case No. D2009-1594, where the Complainant should have known that its case was fatally weak due to the absence of evidence of targeting. There are “breach of certification” cases such as Pick Enterprises, Inc. v. Domains by Proxy, LLC, WIPO Case No D2012-1555, where RDNH is found because the Complainant breached its certification of completeness and accuracy. One of the most common types of RDNH is where a Complainant brought a Complaint despite the fact that it knew or ought to have known that it could not succeed since the Complainant’s trademark rights post-date the domain name registration, such as Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM (WIPO Case No. D2006-0905).
It is important to remember that Rule 15(e) provides very broad parameters for a finding of a bad faith by a Complaint. Indeed, RDNH per se, is considered by the Rules to be merely a single example of the type of Complaint that can be brought in bad faith.
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Accordingly, aside from attempting to unjustly deprive a Respondent of a domain name (RDNH), harassment is enumerated as well, but a Panel can find that a Complaint was brought in bad faith for any number of appropriate reasons.
Sometimes, if not more often than not, it is the Complainant’s counsel that is primarily responsible for filing an abusive complaint. This was the case in Sothys Auriac v. Nonie Creme, WIPO Case No. D2022-3862 where the Panel noted that the fault likely lies solely with the Complainant’s counsel.
Additional Information
Relevant Decisions
UpTerra Corporation v. Maria Cypher, JustTheWord. com, WIPO D2024-3177, <upterra.com>, 3-member, Denied, RDNH
The Complainant’s ex post facto claim in its Reply that it had a “credible belief” that a change in registration occurred is not only unsupported by the evidence but was known at the time the original Complaint was filed.
Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, WIPO D2024-1699, <young.com>, 3-member, Denied, RDNH
This dispute involved a domain name that is a dictionary word and common surname. In the circumstances, one would expect that the Complainant would have provided substantial evidence of both the fame of its trademark and the bad faith conduct of the Respondent. Instead, the Complainant relies upon older outdated cases, and those in which the fame of the trademark concerned was established and makes exaggerated arguments. For example, to say that the Respondent selected the disputed domain name “at least to disrupt the business of Complainant” is a statement not supported by any evidence, and to assert that it is not possible to conceive any legitimate use of the disputed domain name is simply nonsense.
Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-Member, Denied, Declined to make RDNH finding
In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant has valid trademark rights and seems to have been legitimately convinced that, when registering the Disputed Domain Name, the Respondent was targeting the Complainant. The Complainant may have erroneously believed that the registration of the Disputed Domain Name for resale purposes constitutes a strong argument in support of bad faith together with the fact that the Disputed Domain Name was registered under a gTLD which may be related to its financial activities.
BFORBANK v. Hassen Kadhim, CAC-UDRP 106448 (2024) <biorbank.com>, Denied, RDNH
In the present case, the Complainant must have been aware that it filed a copy of its website in English, while its actual website is only available in French, which is an indication of the Complainant not being entirely truthful as it did not mention this and offer an explanation. While the Panel does not give much weight to this, the Complainant’s arguments were further merely based on its allegation that the Respondent was a cyber squatter, without real evidence and ignoring facts which could point in a different direction, such as the contents of the website which was already available at the time of the Complaint, the parties’ possibly different markets, and without contacting the Respondent first to obtain a better understanding of the facts.
Sonata Software Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0051, <sonata.ai>, 3-member, Declined to make RDNH finding
The Complainant’s SONATA trade mark was registered before the disputed domain name, at least in a number of jurisdictions outside of the United States, and used in trade for over 30 years prior to registration of the disputed domain name…On balance, it is not implausible that the Complainant formed a sincere view that the disputed domain name constituted cybersquatting. It cannot be said that it is more likely than not that the Complainant acted with some ulterior purpose in mind, rather than genuinely believing the disputed domain name to constitute cybersquatting.
DNVB, Inc. d/b/a Thursday Boot Company v. Larry Angell, ZombieCorp LLC (aka Uncrate LLC), WIPO D2023-0532, <thursday.com>, Denied, RDNH
Here, the Panel determines that a finding of RDNH against Complainant is proper.
Complainant, represented by counsel, brought its Complaint with clear knowledge that Respondent had registered the Domain Name long before Complainant and its trademarks existed.
Handy Guy Inc. v. Merlin Kauffman, Forum FA2205001998214, <handyguy.com>, 3-member, Denied, RDNH
In the face of these facts, if Complainant wanted this domain name, it should have bought it. Indeed, it tried to buy it, but rejected Respondent’s $10,000 offer as exorbitant. Whether that price is too high or not, it is Respondent’s prerogative to set the price for a domain name in which it has rights. Complainant’s resort to the UDRP is a classic “Plan B” UDRP that reflects bad faith abuse of the UDRP by Complainant.
Matias Eduardo Araya Varela v. Jason Newby, WIPO D2021-4256, <reimex.com>, 3-member, Transfer with Dissenting Opinion
Majority View against RDNH:
The Respondent alleges that the Complaint was filed in bad faith, indicating that the Complainant thought that the price for the disputed domain name was too high, and preferred to file the Complaint to attempt to acquire it. On the contrary, the Complainant indicates that he contacted the Respondent requesting the transfer of the disputed domain name, only in an effort to find out its price, obtain information and evidence for the Complaint.
The majority of the Panel considers that the Complainant’s conduct is not uncommon. The Complainant evidently and understandably wanted to recover the disputed domain name (which appears to have been owned by the Complainant and used in connection to his business prior to its acquisition by the Respondent for more than 12 years). It is not uncommon, to contact the owner of a domain name before filing a Complaint under the UDRP, in order to find information for the preparation of the Complaint.
Minority View in favor of RDNH:
On the issue of reverse domain name hijacking, the record reflects that Complainant reached out to Respondent to purchase the domain name, and then finding that the price was unacceptable commenced this UDRP proceeding. This is generally regarded as a Plan B scheme that supports sanctioning complainant. In this case, Complainant most likely genuinely believed that because it was the prior registrant of the domain name which it lost by inadvertence in renewing it, it had the right to recover what it had lost. It was mistaken because, as the record reflects, “reimex” was not a one-of-a-kind word solely associated with this rights holder. Its attempt to recover <reimex.com> by approaching the Respondent is probably attributed to inexperience in dealing with domain name disputes under the UDRP. It was represented by professional counsel. For this reason, a reverse domain name hijacking sanction is the appropriate remedy.
Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, Forum FA2110001970005 <lumos.com>, 3-member, Denied, RDNH
As such, the questions then become what did Complainant know or what should it have known about these issues, and based on this, was Complainant’s filing so weak as to leave no other rational explanation than in initiating the UDRP Complaint was impermissibly exercising its “Plan B.”
AVK Holding A/S v. Best Web Limited, CAC-UDRP-102848 (2020), <avk.com>, 3-member, Denied, RDNH
Although the Complainant, represented by counsel as well, was informed about the Respondent’s arguments and previous UDRP decisions related to the circumstances described in paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, the second Complaint has been brought without addressing the issues raised by Respondent during the first proceeding.
Bringing two UDRP actions 16 years after the registration of the disputed domain name and failing to conform to the simple UDRP requirements within the first proceeding has cost the Respondent substantial sums to be paid for the legal advice of his counsel, when there was very small chance of proving that the Respondent had acted in bad faith and without having any rights or legitimate interests in the disputed domain name (because of the existence of the previous decisions of the UDRP Panels and the lack of the evidence proving the existence of Respondent’s bad faith).
The UDRP was intended to serve as an efficient means of redress against cybersquatters, not a cheap alternative to commercial negotiation with legitimate domain name holders. The Panel therefore finds and declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, and accordingly that the Complainant attempted Reverse Domain Name Hijacking within the meaning of the Policy.
Costa Crociere S.P.A. v. Yoshiki Okada, WIPO D2018-1632, <costa.com>, 3-member, Denied, Declined to make RDNH finding
While the Panel considers that the present proceedings were misconceived, it accepts that the Complainant may have considered its claim to be justified in view of the Respondent’s more recent use of the disputed domain name in connection with cruise-related links. For that reason, the Panel declines to make a finding that the Complaint was brought in bad faith.
LOGOCOS Naturkosmetik AG v. Anything.com, Ltd., CAC-UDRP-101988 (2018) <sante.com>, 3-member, Denied, RDNH
None of the requirements of the UDRP is met. The complaint is so devoid of any evidence of bad faith on the part of the Respondent that the Panel finds that it is a case of reverse domain name hijacking.