When parties fight over who should own an Internet domain name, sometimes it is easy to see who should win and who should lose. Sometimes it’s clear that the domain name owner is a cybersquatter, and the complainant should win. But other times it is the opposite — the domain name owner is innocent of any wrongdoing and what’s going on is that a covetous party wishes they could wrest the domain name away from its owner. This blog article describes such a case, with an outcome that I find particularly gratifying.
Our firm’s first high-profile representation of an innocent domain name owner was the 1996 case involving the domain name roadrunner.com. That was twenty years ago and our firm handled many dozens of innocent-domain-name-owner cases in the succeeding decade. In the early years of domain name disputes, many players, including most of the trademark community, wrongly assumed that if someone owned a trademark registration and if someone else owned a matching Internet domain name, it must be that the domain name owner was up to no good. It took quite a few years of innocent-domain-name cases for most players to (in some cases rather reluctantly) acknowledge that sometimes the domain name owner was innocent. In the early days of domain name dispute decisionmaking, the only two possible outcomes were that the complainant won or did not win. Eventually the domain name system players who were designing a uniform domain name dispute resolution policy (UDRP) rather grudgingly provided for a third possible outcome, namely a finding that the complainant should never have filed its complaint against the domain name owner and was guilty of Reverse Domain Name Hijacking (RDNH).
If you are an innocent domain name owner, and if you have the bad luck that someone initiates a UDRP proceeding to try to take your domain name away from you, what you wish is that you might be able to convince the UDRP panel not only to rule against the complainant but further, to rule that the complainant is guilty of RDNH.
A finding of RDNH does not, however, carry any remedy, not an equitable remedy nor a money remedy. It is, however, embarrassing for the complainant to be adjudged a reverse domain name hijacker, and one hopes that the prospect of being named a reverse domain name hijacker might dissuade at least some would-be complainants from proceeding in cases that should not be brought.
In twenty years of representing innocent domain name owners, my firm had never managed to convince a UDRP panel to rule against a complainant with an RDNH finding. Finally now we have a case with an RDNH finding, and it feels great. The case is Skyline Communications NV v. WebMagic Ventures LLC, in which Skyline hoped to wrest the dataminer.com domain name away from our client WebMagic. You can see the decision which was rendered October 25, 2016.
It would be nice to be able to take credit for this gratifying advocacy result. But the reality is there are several reasons why our side won (and secured the RDNH result) that have little to do with our firm.
- First, of course, the client was innocent. When a client is innocent, one would hope that an able advocate could secure a ruling the client is innocent. (An analogy could be drawn to the case in which patent counsel manage to obtain a patent for an inventor, and in an old-fashioned way this might have been due in large part to the inventor having invented something that was actually patentable.)
- Second, the client chose to involve itself closely in the work of drafting and reviewing the papers filed on its behalf. Indeed I know, having been closely involved in that drafting and reviewing, that several important points presented in the papers were identified by the client itself. Tellingly, some of those important points were explicitly mentioned by the panel when it ruled in our client’s favor. One visible aspect of this is that the client itself came up with sound bites that were later quoted by the panel.
- Third, although he is not mentioned in the papers, well-known attorney John Berryhill provided much behind-the-scenes advice and counsel that greatly improved the advocacy on behalf of the domain name owner.
It is a welcome development that, after twenty years, our firm has finally handled a domain name dispute in which our client secured a favorable RDNH finding. Our firm’s contribution was modest, but I still find it exceeding gratifying to see this result.