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Historical Snapshots from the Wayback Machine

In the curious case of Eneco BV v. Eneco, D2010-0548 (WIPO July 7, 2010) – curious because the Panel made the Respondent’s case despite its default – a search of <eneco.com> on the Internet Archive’s Wayback Machine at “www.archive.org” provided evidence of good faith registration and use years prior to the Complainant’s trademark. Moreover, “[s]ome webpages disclosed the United States Trademark Registration identifier comprised of the letter ‘R’ in a circle.” The Panel also searched and found ENECO on the USPTO database disclosing Respondent as the registered owner of a registered trademark. A review of recent cases shows that in a good many of them Panels accepted the truth of the historical snapshots. Respondents are expected to do more than deny the evidence.

The “archives” referred to in Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) (Note August 10) would be from the Wayback Machine. The Wayback Machine is a database of website snapshots that Internet Archive (“IA”) has been collecting from 1999. IA’s mission is nicely explained in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007). It collects web pages and “[l[ike a paper library … provide[s] free access to researchers, historians, scholars, and the general public.” With Wayback Machine anyone can have literally a window on the past use of the domain name, although “Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively” thereby preventing the researcher from discovering targeted pages. The iFrancise Panel interpreted blocking as an attempt to conceal infringement, although is it not per se illegitimate as explained by the Respondent in Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010). Blocking after receipt of a cease-and-desist notice is different from a registrant’s policy of instructing Alexa not to crawl its websites.

It is clear that UDRP Panels are comfortable with accepting evidence from the Wayback Machine as persuasive in the absence of any counter evidence. They give historical snapshots great weight in determining both rights and legitimate interests in the disputed domain name as well as respondent’s good and bad faith in registering and using it. In response to the Complainant’s screen shot evidence in Facebook the Respondent “authorize[d] the panel to request archives of the page” but failed to offer any concrete refuation beyond denial of authenticity.

On the other hand, historical snapshots from the Wayback Machine have received a mixed view from U.S. courts. Although a federal magistrate has ruled IA snapshots admissible as “an admission of a party-opponent and are not barred by the hearsay rule,” Telewizja Polska USA, Inc. V. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. October 15, 2004) and there is support from the Second Circuit in Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2d Cir. 2005) (evidence of defendant’s Website advertisements presented through archive.org capture of the site content at particular time), the trend nevertheless appears to exclude such Wayback Machine evidence as hearsay.

2007 was a particularly fruitful year on this issue. For example, in a patent case, Chamilia, LLC v. Pandora Jewelry, LLC., 04-cv-6017 (S.D.N.Y. 9-24-2007) the plaintiff alleged that Pandora failed to submit its patent application to the PTO for more than a year after marketing its product. It offered a series of archived web pages from the Wayback Machine which Pandora moved to strike. The Court held that this “putative evidence suffers from fatal problems of authentication under Fed.R.Evid. 901.” In Novak v. Tucows, Inc., No. 06-CV-1909, 2007 WL 922306, at *5 (E.D.N.Y. March 26, 2007) the Court struck Wayback Machine evidence for lack of authentication of internet printouts “combined with the lack of any assertion that such printouts fall under a viable exception to the hearsay rule.” Wayback Machine evidence was also excluded in a TTAB case, Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007).

Levine Samuel <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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