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False Certification of UDRP Complaint

UDRP Rules require that complaints be certified to the truth and acurracy of the allegations. False certification of UDRP complaint has consequences. Respondents default in responding to complaints approximately 85% of the time so that if there are materially false allegations in the complaint and there is no response the untruths will likely not be picked up and the domain name forfeited to complainant. When a respondent appears and challenges the truth of material allegations Complainant (and no less the attorney if complaint bears his certification) has an ethics problem. As the Panel states in The Procter & Gamble Company v. Marchex Sales, Inc., D2012-2179 (WIPO February 22, 2013) () in considering Respondent’s request for a finding of reverse domain name hijacking:

Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International [trademark] registration [which Complainant acquired by assignment in 2008] and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant.

I’ll return to the RDNH in a moment, because there is another lesson to take away from the decision, namely that the manner in which complainant acquires the trademark right is a critical factor. In Procter & Gamble, Complainant acquired the trademark through assignment from a company with whom it had no prior ownership interest:

The Complainant acquired the 1993 Madrid System WIPO trademark registration for SWASH from a third-party, Henkel AG & Co. (“Henkel”), in September 2008. There has never been any ownership connection between the Complainant and Henkel.

While Respondent acquired the domain name in 2004 Complainant “furnishes no evidence that it sold products under its SWASH trademark prior to 2009.” Although the trademark was in existence in 2004 and hypothetically Henkel (the assignor) may (then) have had an actionable claim against Respondent, Complainant (assignee) in 2008 does not. There is a parallel here: a complainant can no more rely for priority on its assignor’s date of ownership than can a respondent rely on the good faith acquisition and holding of a domain name by a prior domain name holder. The bad faith complainant must prove is bad faith to it, not to the prior trademark owner. Ironically, as the Panel pointed out Proctor & Gamble was itself “engaged in cybersquatting because it claims to have registered its domain name in 2007 before it had obtained the 1993 WIPO trademark registration from Henkel, a non-affiliated party, in 2008.”

Timing of respective acquisitions of domain name and trademark are critical, but not always dispositive of RDNH. Panels do not “usually issue such a finding in a case where a complainant has prevailed with respect to two … of the three elements required under the Policy.” But, this is not the usual case because of the disconnect between what Complainant is alleging and the true facts:

It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.

And, then there is the issue with counsel. “To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.” It is not as though “Complainant and its legal counsel [were] strangers to the UDRP process.” The grotesqueness is multiplied by the untrue allegations of income:

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000.

Such misrepresentation is not simply a credibility problem. False certification corrupts and abuses the process separate and apart from (and in addition to) its act against respondent in attempting to wrest away the domain name:

In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

The Panel’s final observation is that “[t]his Complaint fell very far short of what the Panel was entitled to expect from a Complainant [and counsel] of this stature.” If false certification of UDRP complaint had been removed to federal court or subsequently commenced under paragraph 4(k) the ethics issues would have played a role in the award of damages for reverse domain name hijacking under the Lanham Act.

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