What’s in a Name: Reverse Domain Name Hijacking and Cybersquatting

//What’s in a Name: Reverse Domain Name Hijacking and Cybersquatting

“What’s in a name? That which we call a rose by any other name would smell as sweet.”  Well, Shakespeare, for a business, often times millions of dollars are at stake in its name.  As a result, there has been a sharp increase in reverse domain name hijacking and cybersquatting.  Reverse domain name hijacking is the practice by which trademark owners abusively assert their trademark rights to seize domain names from the rightful owners.  Or, as defined by the Uniform Domain Name Dispute Resolution Policy (“UDRP”), reverse domain name hijacking means using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.  Importantly, domain name hijacking is a distinct concept from cybersquatting. Cybersquatting is the registering, selling, and/or using of a domain name with the bad faith intent to profit from the goodwill of someone else’s trademark.  In contrast to reverse domain name hijacking, with cybersquatting, the domain name registrant does not have legitimate rights in the domain name.  Hence, reverse domain name hijacking can constitute both a vehicle to counter cybersquatting and an independent violation necessitating legal action.

Recent decisions provide insight as to the factors a National Arbitration Forum or World Intellectual Property Organization panel—the two forums for a claim under UDRP—will consider in a reverse domain name hijacking case.  For example, the weddingfleamarket.com decision demonstrates the relevance of whether the domain name is part of the domain owner’s bona fide business and whether that business existed prior to the contesting party’s trademark rights.  For weddingfleamarket.com, the National Arbitration Forum found that Wedding Flea Market, LLC engaged in reverse domain name hijacking and ordered that weddingfleamarket.com remain with its original owner because the domain owner acquired the domain in November 2013 for Rustic Wedding Chic, LLC, a company for which the domain owner serves as both a business advisor and board member.  Whereas, Wedding Flea Market, LLC, which owns the domain name weddingfleamarkets.com, acquired the trademark “Wedding Flea Market” in September 2017.

Similarly, a panel found that for the domain name KTG.com, Kitchens To Go engaged in reverse domain name hijacking.  When the owner of the domain name KTG.com passed away the owner’s sister inherited the domain name and hired a domain name broker to sell it.  The broker contacted Kitchens To Go and Kitchens To Go filed a complaint.  The panel, emphasizing the chronology of events, noted that Kitchens To Go had not taken any steps regarding the disputed domain name since its registration in 2001 and decided that Kitchens To Go acted in bad faith by bringing an unmeritorious complaint.

So, Shakespeare—whether it is Capulet or Montague—for businesses, that matters.  And those suffering from reverse domain name hijacking or cybersquatting can obtain relief under the UDRP and/or the ACPA.  Hutcherson Law helps resolve reverse domain name hijacking and cybersquatting claims.  If you have a domain name issue contact Hutcherson Law today!