One of the hardest outcomes of domain name cases to predict is whether the panel will make a finding of Reverse Domain Hijacking.
Some people say it does not matter whether they do or do not, as such a finding does not carry any penalty. It is not like in a civil case in a court, where the losing party usually has to pay the costs of the proceeding. There are no costs in UDRP cases, so the panel cannot mark its disapproval of the conduct of one side or the other by awarding costs against it.
Nor has a UDRP panel any power to carry out a censure.
Despite this, parties – and especially their lawyers- do not want to have a finding of RDNH made against them. It does not look good. And people, especially lawyers, do not want findings made against them that are tantamount to being censured.
But what is RDNH? Where a complainant loses, the panel might find RDNH where “the complaint was brought in bad faith” or to “primarily harass the domain name holder.”(See WIPO Overview, 4.16).
In some case, the panel will say that the “case should never have been brought and the complainant had no prospects whatsoever of succeeding.” Sometimes, and we emphasise “sometimes”, that will result in a finding of RDNH, especially where the domain name was registered long before the trademark acquisition of the complainant.
But sometimes, even when that is the reason for the loss, the Panel will point to the fact that the complainant was unrepresented, and it decides, on the balance of probabilities that the Complainant failed to understand the Policy, rather than that it deliberately set out to act in bad faith and harass the respondent.
Sometimes, where the panel concludes that the Complainant started out with Plan A, to try to buy the domain name, fails to do so because it will not pay a high enough price and then tries Plan B, bringing a UDRP claim to intimidate the respondent, that will have amounted to RDNH.
Other type of situation which can give rise to RDNH are where the unsuccessful complainant has not been entirely frank and honest with the Panel in presenting its case, say by misdescribing its trademark or leaving out important evidence that then comes to light from the respondent or just plain not telling the proof.
These outcome highlights that panels depend on the available evidence before them when making findings, and demonstrate a reluctance to find RDNH where there is a plausible scenario that the complainant did not make the claim in bad faith, based on the evidence available, but just did not have strong enough case to succeed.
But equally, where a case of bad faith is made out or of conduct the panel feels is reprehensible, it is very likely that it will find RDNH.
SOME RECENT CASES ON RDNH
In two recent similar claims brought under the UDRP, the Complaint was denied largely because of the fact the domain name was registered by the respondents well before the complainants acquired their trademark rights. In one case, Reverse Domain Name Hijacking (RDNH) was found, but in the other it was not. This presents an interesting and practical opportunity to examine the factors which contribute to whether a panel will find RDNH.
Before proceeding, we should ask: what is the formal definition of RDNH?
Paragraph 15(e) of the UDRP Rules states that 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.
To make such a finding, respondents have to demonstrate that complainants brought proceedings against them in bad faith to deprive them of their registered domain name. The WIPO Jurisprudential Overview 3.0 highlights circumstances in which the Overview says that past panels have found RDNH, such as the presence of evidence demonstrating the complainant knew it could not succeed, unreasonably ignoring the established Policy precedent, misleading the panel, providing incomplete evidence, and basing a complaint on the barest of allegations, among other things.
Even that outline, useful as it may be, itself raises questions; for example, can UDRP decisions be really described as precedents? Should parties be bound by them?
In the two cases under consideration, it is clear that both complainants offered weak arguments based on bare allegations, where complainants should have known they could not have succeeded, yet only one resulted in a finding of RDNH. Through examining the reasons why this is the case, we are afforded important insights into how UDRP panels consider evidence and make judgements.
In the first case, in which RDNH was found, the complainant, a company which sells digital car video recorders, had made a claim for a domain name that had been registered some 17 years before the complainant acquired the relevant trademark rights. The disputed domain name’s registration predated the complainant’s internet presence by some years, and as a result of this the panel found that the respondent could not possibly have acted in bad faith in registering the domain name. The complainant, represented by an internal legal team, in the eyes of the panel and based on the available evidence, should have known there was no chance of their claim succeeding, and that their case was “without plausible legal basis” on “only the barest of allegations". This was enough for the panel to determine the claim had been brought under bad faith and thus find RDNH.
On the other hand, in the second case, in which RDNH was not found, the complainant, a individual aspiring to create his own fashion label, had similarly brought a claim under the UDRP despite the disputed domain name being registered some years before he acquired the relevant trademark rights. While the panel acknowledged that the case had no chance of succeeding and should not have been brought, it did not find RDNH for a few reasons, based on the probabilities of the evidence before them. The claimant was unrepresented, and largely due to this fact, the panel considered it plausible that the complainant failed to correctly understand the Policy, rather than that it had acting in bad faith. Given the presence of no evidence to the contrary, the Panel did not find RDNH.
From these two cases, it is clear that the principles which underlie panels descriptions in UDRP proceedings are much the same when it comes to finding RDNH as they are when determining the success or otherwise of complainants’ claims. Namely, Panels are willing to judge only on the substantive evidence before them, and only find RDNH in instances where there is direct evidence to demonstrate the claim was filed in bad faith, not simply that the complainant lost or had a weak case. Particularly in the second case, when there is a plausibility of scenario where there is no bad faith, they may well give the benefit of the doubt to claimant and not find RDNH.
One other point about RDNH. The consensus view on RDNH used to be that it was considered by the panel only if the successful respondent asked for it in its Response. These days the view seems to be that panels may, if they wish, consider it in all case, whether requested or not. There is no provision in the Rules that only when requested may it be considered. Indeed, the Rules are just as consistent with the issue being considered in every case, but presumably only in those case where the complainant lost.
 Sébastien Paches v. Dvlpmnt Marketing, Inc.
Case No. D2019-0742. Denied, but RDNMH found.
 Limited Liability Company AV 808 v. Brian Cury, EarthCam, Inc.
Case No. D2019-0625. Denied, but RDNH not found