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Reverse Domain Hijacking and the Use of WHOIS and Domain Brand Monitoring Tools

In a Uniform Domain-Name Dispute-Resolution Policy (UDRP) case, the complainant usually has to prove these three elements to win:

  • The disputed domain name must either be identical or confusingly similar to the complainant's trademark.
  • The respondent or the registrant has no legitimate interest in the domain name.
  • The disputed domain name was registered or used in bad faith, such as for cybersquatting purposes.

Failing to satisfy these evidentiary requirements can render the case not only null and void, but the panel may also consider it as a reverse domain name hijacking (RDNH) instance.

How Decoweb's UDRP Case Turned into an RDNH Case

The World Intellectual Property Organization (WIPO) defines RDNH as the act of filing a UDRP case in bad faith. Trademark owners sometimes use this tactic as "plan B" when they fail to purchase the disputed domain name at a desirable price from the registrant.

Such was the case of Decoweb Brands, a company in Spain that filed a UDRP case against Wang Jian over the domain name maisondecor[.]com. Decoweb holds trademark rights for MAISON DECOR, both as a word and in its symbolic form. It offered to purchase the disputed domain name for US$500, but the respondent refused to sell it for less than US$7,000.

The respondent contends that Decoweb didn't acquire its European Union (EU) trademark until August 2018, a good 20 years after the disputed domain name was initially registered. As a result, the WIPO panel who heard the case denied the UDRP claim and declared that the complaint was brought in bad faith and is, therefore, an RDNH instance.

Our Investigative Tools: Brand Monitor and WHOIS Tools

We examined the disputed domain name using WHOIS tools such as WHOIS Search and WHOIS History Search, which are part of the Domain Research Suite. Indeed, maisondecor[.]com was created on September 16, 1998.

On the other hand, Decoweb's domain, decoweb[.]com, was registered on July 18, 2002, while its trademark for Maison Decor was only registered in 2018.

Additionally, using WHOIS History Search, we found that the respondent owned the disputed domain way before Decoweb's trademark registration:

Decoweb, therefore, can't prove that the respondent registered the domain name to interfere with its brand given that the trademark didn't even exist beforehand. As such, the respondent retained ownership of the disputed domain name.

While Decoweb can't do much about maisondecor[.]com at this stage, the company may still want to register similar domain names to prevent these from being used in attacks via cybersquatting. With that thought, we ran "maisondecor" on Brand Monitor.

First, 100 potential typos were detected, any of which can be used by bad actors. Decoweb can, however, register some of these misspelled variations to avoid brand abuse.

After 24 hours of brand monitoring, the tool detected a newly registered domain (i.e., masiondecor[.]net) that could be considered an infringement of Decoweb's trademark rights.

A quick WHOIS Search on maisondecor[.]net revealed that it was created on February 10, 2018. Its registrant's details are privacy-protected, however, and so it may not be possible for Decoweb to easily find out who the current owner is (assuming it's not Decoweb itself, of course) and purchase it. As soon as its registration expires on February 10, 2020, though, Decoweb could acquire it if its owner doesn't renew. For now, the company can continue monitoring the domain for changes.

What's more, registering misspelled variants of domain names, including those that use other top-level domain (TLD) extensions, can help Decoweb avoid the hassle of filing UDRP cases in the future.

* * *

What happened to Decoweb shows that not all trademark owners get granted ownership of a disputed domain name, even if it is identical to their registered brands. Other facts come into play, such as the domain and trademark registration dates, which can be obtained using tools such as WHOIS Search and WHOIS History Search.

In general, it's best to register domain names around the same time you file for trademark applications to avoid RDNH rulings. It's also best to monitor your brand for possible typosquatting and trademark infringement with domain brand monitoring tools.

WhoisXML API

About WhoisXML API – Whois API, Inc. (whoisxmlapi) is a big data and API company that provides domain research & monitoring, Whois, DNS, IP, and threat intelligence API, data and tools to a variety of industries.  Visit Page

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