The elements of a reverse domain name hijacking claim are that:
- the plaintiff is the domain name registrant
- its registered domain was suspended, disabled, or transferred under the registrar’s policy
- the owner of the mark who prompted the domain to be suspended, disabled, or transferred is on notice of the action, and
- the plaintiff’s use or registration of the name is not unlawful pursuant to the Lanham Act.
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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