Reverse Domain Hijacking Found in FCC.com UDRP

In the immortal words of Dr. Berryhill..  "This is rarer than a Blue Iguana"  (blue iguana's are a Cayman Islands rarity)

""This is the first time in a long time that a WIPO panel found reverse domain
hi-jacking:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0770.html

Fcc.com - The Spanish complainant - a concrete company - didn't mention what, if anything, the respondent was doing with the domain name.  Of course, if you look at the site, anyone can see that it is an RSS aggregator for stories relating to the Federal Communication Commission.

The Panel found this kind of creative omission to be abusive, regardless of whether the Complainant did it on purpose.  The money quote is where the Panel itself mentioned that a three-member panel pays closer attention to these things than a single member panel:

"[T]he Panel observes that if there had been no response, there would have only been one panelist (it was the Respondent who sought a three member panel) and it is known that some panelists take a more robust view than others where there is no response and some panels restrict their consideration solely to the papers before them. Accordingly, it is not inconceivable that a sole panelist might have decided the case without looking at the Respondent's website and might have come to a different conclusion. [...]

Anyone examining the Respondent's website could see that it was a genuinesite and that anyone1 launching a complaint was bound to fail. The Complaint makes clear that the Complainant had visited the Respondent's website. The Complainant mentions the fact that the Respondent's website features revenue earning advertisements, but does not identify the nature of the advertisements; moreover, the Complainant uses the fact of those revenue earning advertisements (i.e. commercial gain) as a basis for its bad faith claim. The Panel is in no doubt that it was incumbent upon the Complainant in the circumstances of this case, noting in particular the nature of the domain name in question, to provide the Panel with sufficient detail of the Respondent's website to enable the Panel to make a fair assessment." There are a couple of money quotes in the decision. ""

***FS***  Terrific decision and blog fodder

Comments

[Danno]

John Berryhill is the man! Make sure you have him on your 'speed dial'.

Peace!
Dan

[doolally]

I find this bit shocking.

"Accordingly, it is not
inconceivable that a sole panelist might have decided the case without
looking at the Respondent's website and might have come to a different
conclusion."

To me it IS inconceivable that a decision would be made on who gets a domain name with out someone looking at where that domain points to.

There could be 101 million uses for FCC.com

[AssociatedDomains]

Congrats to fcc.com. Wonder if there is a penalty for a company found guilty of reverse domain hi-jacking. If not, the $1500 fee to file a UDRP surely isn't enough.

[Domain Name News Portal]

I wonder if the complainant files a trademark infringement lawsuit instead of a UDRP, then how will the defendant protect his domain. Trademark infringement lawsuits are very expensive for the "small timers" so oftentime s, the domain is just handed over to the complainant.

This is the case with Swapnames.com.
http://www.namepros.com/legal-issues-and-disputes/380695-swapnames-com-lawsuit.html?highlight=swapnames

[Associated Domains]

The trademark infringement lawsuit filed by Snapnames against Swapnames is pure bullying. I am very surprised the elder domainers in the industry are mum about this story.

[passing by]

In response to AssociatedDomains comment, even though findings of Reverse Domain Name Hijacking (RDNH) are rarer than Blue Iguanas, and panelists are very reluctant to return that finding, there is NO penalty associated with a RDNH finding. This is one of the many flaws with the UDRP process.

We've been waiting a long time for companies to appreciate the value of domain names. The downside is that now that companies realize the value of domains, they don't want to pay for the domains - they want to take them at no cost.

If I was a ruthless company, and a domain owner had a domain I wanted, I would probably file a UDRP also. It would cost me a few thousand dollars. I could make whatever allegations I wanted without having to back it up with any evidence. It's a roll of the dice, but I could get lucky. I could benefit from an absurd decision, like MADD did against MADD HATT Enterprises. Or maybe the domain owner won't even file a response so my allegations would go unchallenged.

If I get lucky, I win a domain that could be worth $100,000+ to me. If I'm unlucky, then I'm out a few thousand dollars.

There is nothing in the UDRP to prevent companies from filing abusive complaints. And there are no procedures to remove Panelists who substitute their own personal opinions for the UDRP guidelines.

As a domain owner, you have to be prepared to file a federal suit within 10 days of losing a UDRP in order to protect your domain.

(This is a long post, but I'm going to keep going...)

One of the best things that the ICA can do is find cases that will make good legal precedent and support those cases. The law advances incrementally. And it is a bit like a stack of dominoes. A set of overbroad unfavorable decisions, like the Zaccharini (sp?) cases, can set a precedent that can lead to more bad decisions. That's what we are fighting against now. We need good cases that will result in positive decisions that can be built on with further cases, until we have a solid set of cases that protect our domain assets, and that we can cite in our UDRP filings.

Frank - I spoke with Michael Collins at TRAFFIC about having ICA make an impact by identifying cases that will set good legal precedent and supporting them. Berryhill and the other domain attorneys are willing to donate their time to vet possible cases. Would you throw your support behind this as well?

--

I've filed two court cases already to overturn bad UDRP decisions, and I'm know I'm going to have to budget a lot of money in legal fees to protect my generic domains from covetous companies.

It is very common now when I'm in negotiations with a company over a generic domain that they've picked for their brand or company name, that they'll tell me - "Sell me the domain for the price I want to offer for it or we'll file a UDRP". If the UDRP rules are followed correctly they will lose, but there are many rogue panelists and no policing of them, so that any UDRP is a crap shoot.

If we reopen the UDRP and rely on ICANN to come up with new rules, we could wind up with something even worse. Our best bet is to set good legal precedent through the US court system.

[Associated Domains]

Thanks 'passing by' for the insightful comment and feedback. Appreciate your efforts to rally support and traction on this important issue as it will affect all domainers, larger and small. I am of the latter and if I may help in anyway, please let me know. Thanks.

[passing by]

Thanks 'AssociatedDomains' for the positive feedback. I think the best thing we can all do is support the ICA. These are battles we can't fight on our own, but collectively we can make an impact. The ICA has tiered, affordable membership levels.

Persuade your friends. A lot of domainers don't want anything to do with lobbying or legal battles, but we need to fight to protect what we have.