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Commencing a Proceeding in Violation of Certification

Complainants have to have rights in a trademark to maintain a UDRP proceeding and demonstrate the source of those rights, by registration, license or common law. They must also certify that there is merit to the claim pursuant to Rule 3(b)(xiv) of the Rules of the Policy, which reads

Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

At best the trademark right alleged in Zenni Optical, LLC. An Oregon LLC v. DNS Administrator / Cykon Technology Limited, D2009-1594 (WIPO January 29, 2010) was equivocal – there was some evidence of a license, but suspiciously dated – “the assertions in [the] Complaint were [not] warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” The Rule essentially expands on “the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3,” General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 26, 2006. The Panel stated that

A party can be misleading either by making affirmatively false or incomplete statements, or by intentionally or negligently omitting material facts that would significantly change the interpretation of events by the tribunal or panel trying or arbitrating a case.  All these rules have as their goal a fair and complete decision on disputed matters before the tribunal.  This fair trial cannot be accomplished if a party does not follow the procedural rules in good faith, or presents information which is not complete nor accurate in its pleadings or briefs, or in the exhibits attached to pleadings.

There is a reciprocal rule for respondents at Rule 5(b)(xiii). Compare, Rule 11 of the Federal Rules of Civil Procedure.

On the issue of trademark rights in Zenni Optical, there “are obvious weaknesses.” As the Respondent pointed out and the Panel concurred “the license agreement is signed and dated in September 2002. At the same time, the agreement refers to the marks registered in 2008 and 2009. From this alone, it is self-evident that the agreement cannot, in fact, have been made in September 2002 but that, at the earliest, it must have been made after the registration of the second trademark in March 2009.” This was obviously an attempt to place the timing of the alleged right at or around the time of the registration of the domain name. It then supplemented its attempt by claiming that the mark was used in “‘experimental’ ways before the launch of the ‘www.zennioptical.com’ website and so ‘zenni’ was a searchable term.” The allegation lacks plausibility because nothing is defined and no evidence is submitted to support prior use in commerce.

The lesson, for surely there is one, is that there is no low lying fruit under the UDRP. Zenni Optical was represented by counsel who clearly was unaware of Rule 3(b)(xiv) and evidently had no understanding of domain name jurisprudence. The Respondent requested and the Panel granted a reverse domain name hijacking ruling. “The Complainant should have known its case was fatally weak…. The significantly prior registration of the disputed domain name, in comparison to the Complainant’s trademark registrations, might have called for evidence of alternatively common law trademark rights. However, the Complainant provided no such argument or evidence.”

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