A recent decision by a district court in Arizona demonstrates that trademark owners winning their claims pursuant to the administrative process under the Uniform Domain Name Resolution Policy (UDRP) do not automatically shield themselves from later suit in federal court. The respondent may still bring a “reverse hijacking” claim under the Anticybersquatting Consumer Protection Act – an amendment to the Lanham Act governing trademarks.

A reverse hijacking claim involves a person or company registering a domain narne, but another person or company already owns a trademark that is similar to or the same as the domain name. If the trademark owner improperly seeks to have the domain name suspended or transferred to himself, the party who registered the domain rurme may have a claim that the mark owner is seeking to “hijack” the domain name.

To prove a reverse hijacking claim, a plaintiff must demonstrate that:

  1. Plaintiff is a domain name registrant;
  2. Plaintiff s domain name was suspendedd, isabled,o r transferredu nder a policy implemented by a registrar as described in the Lanham Act;
  3. The trademark owner prompting the domain name to be transferred has notice of the action; and
  4. Plaintiff s use or registration of the domain name is not unlawful.

Nonetheless, even if the trademark owner prevails under the UDRP process, the domain name registrant may still file a claim asserting that the registration was not done in bad faith and is non-infringing. In short, the UDRP order does not end the dispute, and a reverse hijacking claim can be filed in federal court.

Background

The UDRP is an alternative dispute resolution procedure administered by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is responsible for assigning unique names and numbers used on the Internet, such as domain names. ICANN accepts

domain-name registrations through companies referred to as “registrars.” Well-known registrars include Network Solutions, GoDaddy.com, and Google. ICANN and the UDRP, however, do not have the final say. Because domain names are often similar to or the same as business rurmes or distinctive trademarks, both trademark holders and domain name registrants have rights under the Anticybersquatting Consumer Protection Act (ACPA). Those rights can still be assertedif brought within ten business days of the order.

A Recent Reminder that a UDRP Order Does Not Stop a Reverse Hijacking Claim

A recent court decision from the District of Arizona, AirFX.com v. AirFX, LLC (opinion here), demonstrates this interplay. The defendant is an Indiana-based retailer that sold motorcycle and vehicle parts and owned the trademark “AIRFX.” Mr. Lurie, a plaintiff, purchased the domain name “airft.com” from a third party in 2007, planning to use it in a business venture marketing a wind tunnel that allows skydivers to practice aerial stunts.

After the purchase, the defendant contacted Lurie and threatened to sue if he did not sell the domain name to the defendant. Lurie refused to sell. In 2010, the defendant again contacted Lurie, stating that Lurie’omust turn over control” of the domain name. Lurie again refused to sell, and in early 2011, the defendant filed a complaint under the UDRP. The UDRP ruled in favor of the defendant. Within ten days of the ruling, however, AirFX.com and Lurie filed a complaint in Arizona district court, alleging a reverse hijacking claim. Defendant then filed a motion to dismiss for failure to state a claim-in effect, arguing that the AirFX.com and Lurie had not alleged facts that would allow the court to rule in their favor.

The defendant made the fatal mistake of relying on the order handed down by the UDRP panel. The court remarked that the defendant did not appropriately respond to the allegations in the complaint, but was “relying instead on the findings of the UDRP panel.” Rejecting this reliance, the district court cited Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona 330 F .3d 617 (4th Cir. 2003) (opinion here) that held that “any decision made by a panel under the UDRP is no more than an agreed-upon administration that is not given any deference under the ACPA.” The court then reviewed the complaint, concluded that it was suffrcient to support a reverse hijacking claim under the ACPA, and denied the motion to dismiss.

Beyond the issues posed by the UDRP, a plaintiff in a reverse hijacking claim must show that its “use or registration of the domain name [not be] unlawful.” A person’s use or registration is “unlawful” if the person registered the domain name with bad faith intent to profit and registers or uses a domain name that is identical to or confusingly similar to a distinctive trademark or may dilute a famous trademark. ln AirFX.com, the court concluded that this element was met because the parties’ businesses were so dissimilar that plaintiffs could not have intended to divert customers away from the defendant. The court will determine whether the registration was lawful based only on the intention of the registrant at the time of the domain name registration.