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When a Domain Name Dispute is 'Plan B'

Doug Isenberg

"Plan B" (noun): an alternative plan of action for use if the original plan should fail.

While having a backup plan is usually a good idea, it's often not an effective way to obtain someone else's domain name — at least not when Plan B consists of a company filing a UDRP complaint with the hope of getting a domain name to which it is not entitled and could not acquire via a negotiated purchase.

"Plan B" as a derogatory way of describing an attempted domain name acquisition usually arises in the context of a domain name that is not protected by exclusive (or any) trademark rights, or where the complainant clearly could not prevail in a UDRP proceeding. Such as (to name a few real examples): <queen.com>, <boon.com> and <hug.com>.

A Short History of 'Plan B'

The label appears to have first been used in the context of domain name disputes in two decisions from 2007, one involving <michelman.com>, the other <giggles.com> and <giggles.org>.

In the <michelman.com> case, the panel described Plan B like this: "Complainant commenced this proceeding as an alternative ('Plan B') to acquire the disputed domain name after being rebuffed in the anonymous auction process."

Through the years, the "Plan B" terminology has been invoked in about 50 cases, nearly all of which resulted in decisions allowing the current registrants to keep the disputed domain names.

The panel in the <queen.com> proceeding called it "a classic 'Plan B' case where a party, having been frustrated in its negotiations to buy a domain name, resorts to the ultimate option of a highly contrived and artificial claim not supported by any evidence or the plain wording of the UDRP."

In that case, the facts at first glance might seem appropriate for a UDRP case: The complainant had trademark rights in QUEEN that pre-dated the 1997 registration of the domain name, and the domain name was used in connection with a pornographic website. When the complainant contacted the registrant about buying the domain name, the registrant quoted a purchase price of $2 million or a lease at $15,000 per month.

But, the panel focused on the "dictionary meaning" of the word "queen" and the fact that the domain name was not directed at the complainant, which is active in the flower-growing industry:

[T]he Disputed Domain Name consists of a common term and the Respondent has used the Disputed Domain Name in a way which corresponds to one of the common meanings of that term. The Complainant has failed to give the Panel any reason to think that the Respondent registered the Disputed Domain Name to capitalize on the alleged fame of the Complainant's trademarks in any way, rather than in connection with one common meaning of the Disputed Domain Name.

The fact that the Disputed Domain Name redirects to adult material does not alter this finding. Where a domain name registrant tries to obtain financial gain by registering and using a non-generic domain name in which it has no rights or legitimate interests, the offering of adult content may be evidence of bad faith use.... However, as the Disputed Domain Name has a dictionary meaning, those cases do not apply.

In other words, thwarted in its effort to purchase the domain name, the complainant resorted to Plan B, filing a UDRP complaint. Obviously, that didn't work, and the complainant lost the UDRP case.

Reverse Domain Name Hijacking

In addition to simply losing a UDRP decision, a complainant that pursues a Plan B domain name dispute could see its plan backfire, if the UDRP panel finds that the complainant tried to use the policy in bad faith to attempt to deprive a registrant of its domain name. That's the definition of "reverse domain name hijacking" (RDNH), and some panels have reached that conclusion in Plan B cases.

For example, when one company filed a UDRP complaint for the domain name <novelist.com>, the panel not only denied a transfer but found that the complainant had attempted to engage in RDNH — even though the complainant owned a trademark registration for NOVELIST. In that case, the panel wrote:

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of its rights. Respondent cites Complainant's multiple previous offers to purchase the Domain Name and argues that Complainant is using the proceeding as a "Plan B" to obtain the Domain Name.

The Panel infers that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith. The Panel finds there is sufficient evidence to this effect, and therefore concludes that reverse domain name hijacking has occurred.

While a finding of RDNH doesn't have any direct consequences, no one should want to be publicly shamed with such a finding.

Lesson Learned

Companies that desire someone else's domain name are wise to explore all of their options. Sometimes, an effort to buy the domain name makes the most sense as a first course of action, even if the company has a strong legal case — because a purchase can eliminate uncertainty and get resolved quickly. (See: "How to Assess the Value of a Domain Name.")

But if an attempted purchase fails, a UDRP complaint only makes sense as Plan B if the company evaluates its likelihood of success and determines that it has a strong case. Otherwise, it risks losing time, money and a little bit of reputation.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm. Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

Related topics: Domain Names, Law, UDRP

 
   

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