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Importance of Serving Early Cease and Desist Letter

The timing of notice can be a critical factor in determining parties’ respective rights to a disputed domain name. A cease and desist letter is important for establishing an outside date. It stops the clock on the paragraph 4(c)(i) defense. MBO Partners, Inc. v. MyBizHomepage, Inc., FA1004001319466 (WIPO June 1, 2010). While a complainant’s delay in initiating a proceeding against a respondent who has registered and is using the domain name in bad faith does not create a right or legitimate interest that does not otherwise exist – there is no laches defense as such – delay in giving notice may be consequential if in the interim between registration and notice the respondent establishes its bona fides. Paragraph 4(c)(i) of the Policy. Delay favors the respondent. For this reason it is in the complainant’s interest to act promptly after knowledge of a potential infringement.

It has been noted that “[a]lthough … a [cease and desist] letter is not strictly necessary, replies and/or subsequent conduct by a Respondent can often help to prove or infer bad faith registration,” “21” Club Inc. v. 21 Club, D2000-1159 (WIPO November 22, 2000). Correspondence can also prove determinative, in complainant’s favor when the respondent makes admissions against interest and in respondent’s favor when complainant initiates negotiations to purchase the domain name. If notice is given by a cease-and-desist letter the complainant should move promptly to challenge the registration. Tardiness may support acquiescence. Sun Studio Entertainment, Inc. v. Memphis Recording Service, FA0805001189842 (Nat. Arb. Forum June 19, 2008) (domain name identical to the U.S. trademark in MEMPHIS RECORDING SERVICE).

In MBO Partners, neither party addressed the fact that there was no notice of a dispute between the parties in 2005 when Respondent registered … <mybizhomepage>.” Rather, the “notice of the dispute arose years later when Respondent attempted to register the disputed domain names as trademarks with the United States Patent and Trademark Office.” In consequence, “the evidence shows that for several years prior to the dispute, Respondent made a bona fide offering of goods or services.”

The Respondent in MBO Partners genuinely conducted business “before any notice of the dispute.” Equivocal circumstances, however, will favor the complainant. To successfully invoke the 4(c)(i) defense a respondent cannot rely on any post-notice actions. The defense is limited to actions taken prior to receipt of the notice. “To allow Respondent’s claim that he has made post-filing changes to his website to alter the outcome of this dispute would open the door for all future respondents … to avoid the consequences of their actions,” Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum March 5, 2003); Poker Host Inc. v. Russ “Dutch” Boyd, D2008-1518 (WIPO December 1, 2008) (“If use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names.”)

Although a domain name registrant has no obligation to respond to the complainant’s cease and desist letters, there are cases in which Panels have found that a twin failure to reply to the complainant’s cease and desist letter and to file a response to the complaint are conclusive that the respondent has no right or legitimate interest in the domain name and registered and is using it in bad faith. The finding is based on the notion that if the respondent had a right or legitimate interest it would have responded. On the other hand, no such inference can be drawn when the respondent answers the complaint.

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

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