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When UDRP Claims Become Trademark Bullying

Trademark owners have an inherent right to protect their brand but not to a corresponding domain name in all instances and in some instances UDRP claims become trademark bullying. In connection with a study mandated by The Trademark Technical and Conforming Amendment Act of 2010, the USPTO has requested “feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics … and is [soliciting] suggestions to address any allegedly problematic litigation tactics.” The question defines a trademark “bully” as a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Responses from a number of trademark organizations flatly reject the implication that aggressive tactics equate to bullying. For example, the AIPLA notes that the definition of bullying “unfairly characterizes trademark owners who assert their legitimate rights under the law and assumes ill intent without defining what might be considered ‘harassment’ or ‘intimidation’.” The question is, How far is too far?

The responding trademark organizations point out that trademark holders have a duty to protect their intellectual property, or lose it. Aggressive protection does not necessarily rise to the level of bullying, although this is the target’s subjective believe. “The One concern that some respondents to the ABA-IPL survey identified is that the alleged ‘victims’ of trademark bullying often believe that a trademark owner is asserting rights too broadly, even though owners are required to protect their rights.” A Rule 11 sanction is a possible remedy against the overly aggressive that tips into bullying , although (as the ABA-IPL response also points out) “courts are generally reluctant to award sanctions or attorneys’ fees and frequently decline to invoke [them].”

Those answering the ABA-IPL survey believed that the issue “should be left to the judiciary on a case-by-case basis.” A good illustration of this is the David and Goliath duel in Toyota Motor Sales USA Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) applying the nominative fair use defense. Although “bullying” is not mentioned Judge Kozinski concludes his opinion with the following statement: “Many of the district court’s errors seem to be the result of unevenly-matched lawyering, as Toyota appears to have taken advantage of the fact that the Tabaris appeared pro se.”

The “bullying” theme has also been raised against complainants to a UDRP proceeding. In a comment posted on UDRP-Search, for example, referring to a pending WIPO case by Massachusetts Financial Services Company for the domain names <mfsforex.com>, <mfsfunds.org,> <mfsmarkets.com> had this to say “The BIG guy like MFS is taken an advantage on small guy. I would like to whole world to know this.”

Panelists have a Rule 11 kind of tool for declaring “bullying” (or “reverse domain name hijacking” in the lexicon of the UDRP). Parties are required to sign their pleadings with a certification that “the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent],” Paragraph 3(b)(xiv) of the Rules of the Policy. This is “essentially a certification and expansion of 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).

 

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