If you ever wanted proof that brands continue to have challenges understanding their digital IP and associated rights, just take a look at some of recent domain dispute decisions. It is one thing for a brand to lose a domain dispute, it is another thing altogether to be found guilty of what is known as Reverse Domain Name Hijacking (RDNH), or using the dispute process in bad faith to ‘hijack’ or effectively ‘steal’ a domain. In the last two months alone, the list of brands found guilty of RNDH is quite remarkable; Beautiful People Magazine guilty of RDNH over BeautifulPeople.com, Fiesta eCigerettes over fiesta.com, Orient Express Travel Group over etg.travel, Gibson Guitars over EpiphoneAmps.com and Fashion retailer Mango over mango.co.uk and mango.uk. In each instance it is not a question of whether the brands in question have rights, the majority of the time they do. What is often difficult for some to determine is that those rights may not be unique, and other parties; individuals or companies may have an equal if not greater rights to a domain name or digital asset.
A few months ago, NetNames was engaged by one of our larger UK customers to secure the domain which would become the focal point of a new global marketing campaign. Having worked with the registrant and having fought off interest from a number of other parties, we successfully agreed a deal on behalf of the client. Before the deal could complete however, one of the other interested parties then filed a UDRP against the registrant. A domain that is the subject of a dispute is immediately locked and, under normal circumstances would mean that any sale would fall through. Instead of walking away from the deal, we carefully worked with the customer, the registrant and Crowell & Moring, our specialist legal partner, to determine whether there was anything we could do. Once we had investigated the claim, it was established that the filing from the 3rd party appeared unfounded for the following reasons:
- The complainant held no registered trademark.
- Goodwill in their unregistered mark would be restricted to the UK and would not be relevant to the registrant who was US based.
- They had taken no action in the 13 years since its business was established and they decided to operate from the dotOrg variant of the domain in question.
- Neither the complainant nor its Unregistered Mark had developed a strong reputation since its alleged inception.
- They had tried to acquire the domain, but did not wish to pay the value the registrant was looking for; in the end the complainant had threatened the registrant with a UDRP if they did not accept their offer.
On the basis of the above information, we decided to use Crowell & Moring to defend the registrant, have the case overturned and secure the domain name for our customer.
The outcome was even stronger than we expected. Not only did we win the case and have the UDRP overturned, but the complainant was found to be acting in bad faith and guilty of Reverse Domain Name Hijacking. The domain is now in the process of being transferred to an extremely happy customer from an equally as happy registrant.
Whilst it was a great success, demonstrating our ability to get the required outcome for our customers, it also provided yet another example of how some brands still struggle to understand how to use their digital IP and the continuing need for support around how to effectively protect their brand online.