But panels do have another power and that is to find what is referred to as Reverse Domain Name Hijacking (RDNH) and make a declaration to that effect. The declaration speaks for itself, which is why Complainants are keen to have such a finding where appropriate and Respondents strongly oppose them.
I have thought for some time now that it would be useful to set out the principles governing declarations of RDNH.
In the recent decision in Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (NAF case no. FA0904001255365) I analysed in detail the facts that had occurred in that case to show how they might influence the decision-making process and concluded that:
“Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case.”
It cannot be emphasised enough that the facts in a particular case are tremendously important.
Deciding a case on its merits
Accordingly, the first step than a panellist should take is to remind him or herself that, as with all issues, an application for a finding of Reverse Domain Name Hijacking should be judged as an individual case to be decided on its own merits and in the light of proper principles and the evidence adduced in the particular case for decision. Previous decisions are, of course, always interesting, but they must not be regarded as precedents to be followed slavishly and must not have priority over the facts in the instant case that is before the panellist. By the same token, panellists should approach the issue with the objectivity and independence they bring to bear to all proceedings.
The rules
The second step is to examine again the Rule giving the panellist power to decide this issue, for that sets the ambit of the power and marks the boundaries within which the panellist should make the decision. It is of course Rule 15(e) of the UDRP Rules, which provides:
“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 my mind, the Rule makes a number of things reasonably clear[1] and they are:
The panel may consider the issue of RDNH even if no request or application has been made by the Respondent for it to be considered; the use of the Rule is not contingent on the Respondent asking for a finding of RDNH. Indeed, the Rule does not provide that it is only in defended cases that RDNH arises for consideration;
The Panel has a duty to make a positive finding if the grounds for it have been made out; the Rule is clearly one of those rules where “shall” means “shall” and not “may“. Indeed , it is interesting that the Rules almost always use the mandatory “shall” and that only on very few occasions is a discretion conferred by the use of the word “may”; those who drew the Rules therefore knew which functions they wanted to make mandatory and the very few cases where they wanted a function to be discretionary;
Although the issue is usually seen as whether or not there was RDNH, the Rule actually enables the panellist to make one of two findings or even both of them. The panellist could find that the complaint is one brought in bad faith, an example of which is an attempt at RDNH. RDNH is itself defined[2] and it is defined as using the Policy in bad faith in an attempt to deprive a registered domain-name holder of a domain name. So the first finding that could be made is bad faith, where the intention is an attempt to deprive the Respondent of the domain name. But there is a second finding that may be made, namely one that the complaint was brought to harass the Respondent. That is a separate finding that may be made and where the ordinary dictionary meanings of “harass”, such as “tormenting” apply. When either of those findings is made, the panel must then make a declaration that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding;
It is a reasonable conclusion on the normal principles of statutory interpretation that those who drafted the Rules intended them to be complied with and that a finding of RDNH, or more precisely, a declaration of bad faith and abuse of process should be made where an adverse finding of fact has been made. Indeed, the Rules go out of their way to provide specifically that such declarations shall be published by the Provider of the arbitration service[3];
A declaration of bad faith and abuse of process does not carry a penalty for an unsuccessful complainant; it does not result in an order for damages, an apology, costs or interest. It is, however, properly treated as a significant step in the proceedings and just as some respondents argue vigorously for a declaration, complainants and their advisers argue vigorously against one, as clearly they do not want to be the subject of an adverse ruling.
The final and most difficult question of course remains.
When should a finding of RDNH be made?
Panellists must remind themselves that they are required to “consider (…) the submissions” before making a finding, i.e. that they should examine and weigh up the facts and the arguments in every given case before deciding whether the complaint was brought in bad faith or primarily to harass the domain name holder. In the course of that deliberation there are some considerations that might be helpful to panellists and to practitioners and parties weighing up the possible outcome of the case.
First, it follows from the above analysis that the question should at least be considered, especially in cases that are defended. Secondly, the standard of proof is the balance of probabilities and the panellist might consider applying the test of whether, having regard to all of the facts and circumstances, it probably was or probably was not the case that the complaint was brought in bad faith or to harass the Respondent.
Thirdly, in doing so, the panellist must reach conclusions on motive and intention. In that regard, the presence or absence of particular facts may be of assistance to the panellist in reaching those conclusions; for example, if there were no arguable case to support the claim, rather than an arguable one, the panellist may be disposed to make an adverse finding, i.e. a finding of RDNH. That was the situation in CDG v. WSM Domains – Privacy Registrations (NAF case no. FA0703000933942) where there was no case presented on two of the three elements. Accordingly, although it is always a matter for the individual panelist, panels may find that if the Complainant could not put together a case on 2 of the 3 issues involved, the complaint was unsupportable and perhaps should not have been brought.
But if the Complainant’s claim was simply optimistic, but arguable and certainly not reckless or irresponsible, the panellist may make a finding that this falls short of bad faith or harassment. In other words, it is not enough that the Complaint was denied; that does not automatically lead to a finding of RDNH.
The time when the complaint was filed – is delay relevant?
Depending on the circumstances of the case, one factor to which regard may be had is when the Complaint was filed, in other words for how long did the Complainant wait after knowing the facts, before it brought the claim?
Laches or delay is not usually regarded as a defence in UDRP proceedings, but delay may be relevant in other respects. If it can be shown that the Complainant stood by for several years, knowing of the conduct of the Respondent of which it now complains, it may be argued that bringing the claim after such a time shows bad faith or harassment. There are cases where this has been held and a finding of RDNH has been made. For example, in The New Piper Aircraft, Inc. v. Piper.com, (NAF case no. FA 94367) the panel said:
“Complainant’s waiting two years to complain after being advised of the existence of the site indicates that Complainant did not believe that Respondent intended to attract internet users to its site through confusion.”
Undoubtedly, panels will continue to judge individual cases on their merits and there will not be universal agreement of the decisions reached on this contentious issue. For example, another recent case, Success Bank v. ZootGraphics c/o Ira Zoot, (NAF case no. FA0904001259918)was a case where the domain name <successbank.com> was registered in October 2003, when the Complainant was known as the Davis County Savings Bank. In December 2007 it changed its name to “Success Bank” and in January 2008 obtained Federal registration of the SUCCESSBANK trademark. It was submitted by counsel for the Respondent that in alleging bad faith the Complainant was in effect alleging that the Respondent must have had “psychic powers” and knew when it registered the domain name that, four years later, the Complainant would change its name and register the trademark. The complaint was dismissed, but there is no indication given in the decision why the panel did not go on to consider and decide the issue of RDNH.
CONCLUSION
The conclusion must be, therefore, that the power to make declarations of bad faith and abuse of the administrative proceeding is there and is ample to achieve that task. But, as with all judicial and quasi -judicial tribunals, the use and effectiveness of that procedure will always depend on how individuals come to make judgments on the facts and circumstances in particular cases.
We will continue to study the cases where RDNH had been dealt with as an issue and let our readers know of any significant developments that occur.
[1] However, the panellist should always keep an open mind on submissions that the Rules have a different meaning from that suggested here.
[2] In the definitions Rule, i.e. Rule 1.
[3] Rule 16 (b)