2011.03.30

Domain Name Lawsuits | Reverse Domain Name Hijacking Leads to Penalty

Reverse domain name hijacking is typically a term used by domain name attorneys in threat letters and responses to threat letters.  Reverse domain hijacking refers to a an entity's attempts to secure a domain name by making false cybersquatting  claims.  Under the Uniform Dispute Resolution Policy (UDRP), panels have often found that overreaching trademark owners are guilty of reverse domain hijacking.  Other than a ruling in the UDRP decision, there is no monetary damages or penalty for such behavior.  The ACPA does not even expressly recognize reverse domain hijacking.  However, that did not stop a judge from rewarding over $100,000 in cybersquatting case as a penalty in finding reverse domain name hijacking.  The judgment, as posted by domainnamewire.com, was in favor of DigiMedia.com after GoForIt Entertainment attempted to acquire generic domain names based upon a theory that use of "goforit" as a third level domain name constituted cybersquatting.

Goforit Entertainment, LLC v. Digimedia.com L.P., Et Al.



Trademark owners and domain name owners alike should pay particular attention to how this decision could influence other domain name lawsuits.  What was once lip service, reverse domain name hijacking now appears to have some teeth in the form of a Federal District Court Order. 

COMMENTS

REVERSE DOMAIN NAME HIJACKING is a real problem for domainers who are attacked with threat letters, UDRP filings and ACPA lawsuits by overzealous trademark owners. Sometimes, it is just a question of economic leverage. Does the domainer really want to spend the money to fight for a domain name? Do you have to hire a domain attorney to defend your rights against a threat of trademark infringement?

Reverse domain hijacking is attempted all the time. UDRP decisions sometimes note the problem. But I have never seen a court decide the issue before under the ACPA Anticybersquatting Consumer Protection Act. I wonder how the Plaintiff's lawyer is explaining this to his client?

Lesson for domainers everywhere. You can file a counterclaim against a trademark owner on a reverse domain name hijacking claim and tortious interference. .

(iv) If a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney’s fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant.

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