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Clear and Convincing Evidence of Infringement

See Anthology of Commentaries — 2014

In civil actions there are two standards of proof, clear and convincing and preponderance of the evidence. For complainant to succeed under the Uniform Rapid Suspension System (URS) there must be clear and convincing evidence of infringement. It has probably been noticed that 99% + of the complaints filed under the Uniform Rapid Suspension System (URS) involve well-known trademarks: LIPITOR, RIPOFF REPORT, IBM, MCGRAW-HILL, PORSCHE, LUFTHANSA. Pending cases include: MORGAN STANLEY, NETFLIX and WEIGHT WATCHERS. Application of the first to register doctrine depends on a registrant’s choice of the second level domain and the use to which it intends for the resolving website. Domain names composed of generic terms, common words and descriptive phrases used in their semantic senses and held by the original registrants are immune to forfeiture. The hundreds of new suffixes becoming available–.guru, .email, .ceo, .center, .club, .technology and .company that are featured in recent challenges–do not change the basic jurisprudence on this issue. Where it cannot be said that there is a possible use that would not be infringing the respondent not only has no right or legitimate interest in the domain name but the registration is abusive. This applies whether the complaint is filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) or the URS. Current or demonstrable future non-infringing use is the ultimate determining factor.

The first wave of URS decisions make the point that registering well-known trademarks with any new top level domain will be infringing because any use–at least, any use that has currently been advanced to support legitimacy–creates a likelihood of confusion with Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.” The only possibility for avoiding forfeiture is a second level domain that does not necessarily invoke the trademark–a geographic location plus the suffix for example, such as <southwest.email> if “Southwest” has no reference to the trademark. The few denials of suspension under the URS have mostly involved insufficient evidence; that is, it has not been “clear and convincing.”

In Virgin Enterprises Limited v. lawrence fain, FA1402001545807 (Nat. Arb. Forum March 20, 2014), for example, the Panel held that

failure to establish in the record that the relevant trademark [BRANSON] is strong plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.

The holding in Virgin Enterprises is not entirely satisfactory, which is the reason that the Expert concluded the decision as follows: “the URS process is a narrow one and is ‘without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,’ URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints.”

In all the other cases the trademarks noted above are household names. For what purpose would registrant want <lufthansa.email>, <lipitor.guru>, <morganstanley.solutions> or <h-d.bike>? An anonymous commentator on <udrpsearch.com> reacting to the decision on Deutsche Lufthansa AG v. yoyo.email et al., FA1404001552833 (Nat. Arb. Forum April 30, 2014) notes that “[t]his decision is going be appealed in a competent legal system. The URS and UDRP dispute forums are less than capable/credible.”The URS and UDRP dispute forums are less than capable/credible.” The Respondent contended that

it intends to use the Domain Name, and a large number of other domain names which have been registered with the .email suffix for the same purpose and with similar surrounding circumstances, for a service to internet users of a recorded delivery service and/or email reply monitoring system each driven by a neutral communication platform.

There are undoubtedly legitimate domain names with the .email suffix but not with well-known trademarks. Domainnamewire.com reported there were 27,966 registrations for .email as of May 8. It is likely that only a handful of these registrations will be infringing but it is also likely that many of the registrations will not be economically viable. The anonymous commentator did not explain why he believed the decision was wrong but there is no “competent legal system” that would permit a registrant to dictate use of a trademark over the owner’s objection.

A similar problem arose with some .ceo domain names, <wolfram.ceo> and <mittal.ceo>. In ArcelorMittal v. Andrew Davis et al., FA1403001550814 (Nat. Arb. Forum April 4, 2014) the Registrant stated that “he plans to offer email and web link services to interested buyers, offering email addresses such as ContactMe@Mittal.CEO, WriteMe@Mittal.CEO, or John@Mittal.CEO, and at the same time states that his website will not contain any content that confuses its visitors with the Trademark/Company MITTAL.” However, there is no explanation for choosing the trademark and the Examiner found “this statement totally inconsistent, since the sole fact that email addresses planned to be sold by the Respondent contain the domain MITTAL which happens to be the name of a company and a registered trademark, does immediately create an association and a confusion with the owner of the trademark that cannot be allowed.”

All of these trademarks–even BRANSON although unsuccessful in the URS–have a high level recognition in the marketplace. As a trademark ascends the classification scale respondents’ explanations for their choices must be more persuasive that the evidence of infringement is neither clear nor convincing; default will invariably result in suspension and appearance fares no better if the explanation is unpersuasive.

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