Reverse domain name hijacking

Under the ACPA:  When a domain has been transferred, suspended, or canceled as the result of a UDRP proceeding, the ACPA permits the registrant to bring a reverse domain name hijacking claim in court to establish that its use of the domain was lawful.  A successful registrant is entitled to injunctive relief, including the reactivation or transfer of the domain back to the registrant. 

The elements of a reverse domain name hijacking claim are that:

1. the plaintiff is the domain name registrant
2. its registered domain was suspended, disabled, or transferred under the registrar’s policy
3. the owner of the mark who prompted the domain to be suspended, disabled, or transferred is on notice of the action, and
   
4. the plaintiff’s use or registration of the name is not unlawful pursuant to the Lanham Act.
   

In Barcelona.com., 330 F.3d 629, the registrant, an individual who used the domain barcelona.com as a tourist portal with information about Barcelona, Spain, successfully asserted a claim for reverse domain name hijacking.  The Barcelona City Council, which owned many trademarks incorporating the term Barcelona, filed a UDRP claim against the registrant, resulting in an order by the panelist that the domain be turned over to the City Council. 

The registrant filed a declaratory action in District Court for reverse domain hijacking.  Reasoning that the term Barcelona has geographical significance because it designates a specific area, the court found that it is not entitled to trademark protection until it has acquired secondary meaning.  Because Barcelona had not yet achieved the secondary meaning, the court held that the registrant’s use of the domain was not unlawful and ordered its immediate transfer back to the registrant.  

Under the UDRP: The UDRP permits a registrant against whom a claim has been filed to assert, in response, reverse domain name hijacking to request that the arbitration panel find that the complainant is misusing the arbitration process to take a domain or to harass the registrant. 

To prevail on such a claim, the registrant must show that the complainant knew of the registrant’s right or legitimate interest in the domain or its clear lack of bad faith but brought the complaint anyway. 

The UDRP fails to establish any specific penalties for reverse domain name hijacking, and panels rarely find that it has taken place.  The keys to those decisions in which the panel does find reverse domain name hijacking appear to be (1) the generic nature of the disputed term(s) and (2) the obviousness of the registrant’s good faith.

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