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Recent Case Notes & Commentary

Evidence saves a Complainant from a finding of reverse domain name hijacking

WIPO Case No. D2019-2055

November 22, 2019

In the case of Terracon Consultants v Steven Dye, the Respondent requested that the panel make a finding of reverse domain name hijacking (RDNH). Respondents can always make this request and will often do so when it appears to them that the Complainant’s claim is baseless, vexatious or brought in bad faith. The finding is essentially an acknowledgement that the Complainant has abused UDRP processes in an attempt to claim ownership of the domain name unjustly.

In this case, Terracon Consultants made exaggerated statements in their submission about the likeness between their trademark and the Respondent’s website logo as well as the nature of the Respondents’ business. A common motivation for doing such things is to create the appearance of bad faith use of the domain name by the Respondent making it more likely that the Complainant will succeed. In the present case, the Panel found for the Respondent on bad faith, i.e. the Complainant had not proved that the Respondent had registered and used the domain name in bad faith. But now that the claim for RDNH had been made, the question was whether the Complainant had acted in bad faith itself by bringing the claim.

The panel found that the Complainant may have been pushing the envelope in its case against the Respondent, but it had not acted in bad faith. What it said about the Respondent was open for it to have submitted.

In other words, in spite of venturing into the above ‘grey zone’, the panel found that the claim was not baseless or brought in bad faith, partly because under the circumstances the Complainant might have also had a claim for trademark infringement or unfair competition. The possibility of these claims was supported by evidence produced by Terracon Consultants of actual market confusion whereby invoices and other correspondence were accidentally sent to them instead of the Respondent business.

The availability of common law causes of action and evidence of actual market confusion will comprehensively support the basis of a UDRP claim. Evidence of this sort will also (somewhat) inoculate Complainants against findings of RDNH.

The conclusion on whether to find RDNH or not was a close-run thing, made on balance, which is the way that arguments on RDNH often end up. The decision is therefore worth noting when practitioners are trying to argue that there are factors that should be enough for a finding of RDNH and the Respondent is trying to argue that there are not. In other words, the result will be determined by the side of the scales on which various facts and circumstances fall.

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