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Multiple Related Complainants Each With Individually Vested Trademark Rights

ICANN’s Rules for the Uniform Domain Name Dispute Resolution Policy provide that “[a]ny person or entity may initiate a complaint” against a registrant who it accuses of registering a domain name identical or confusingly similar to a trademark in which it claims a right, Paragraph 3(a). WIPO’s Supplemental Rules state that “[a]ny term defined in the [ICANN] Rules shall have the same meaning in these Supplemental Rules.” The National Arbitration Forum’s Supplemental Rule 1(e) is more interpretative. It defines the party initiating a complaint as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint” (emphasis added).

Typically, the complainant is a single person or entity, although the “any” phrase has long been construed to include more than one and may be several persons or entities. The Panel in Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, D2002-0760 (WIPO November 1, 2002) rejected the Respondent’s argument that a complaint must be filed by a single complainant. He held that “[t]he naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary.” And, continued, that it “is preferable that a dispute concerning the domain names be considered in a single proceeding than in a multiplicity of proceedings.” This is the generally accepted majority view as expressed in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

Société Générale and Fimat International Banque and like cases concerned related business entities. In 2008, an unrelated group of Complainants “initiated a complaint” under the Australian Domain Resolution Policy (“auDRP”), National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, DAU2008-0021 (WIPO March 6, 2009). The consolidation issue posed in that case subsequently arose in several UDRP cases, of which the latest is Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc., Bimbo Bakeries USA, Inc. v. John Paulsen, D2010-1647 (WIPO December 3, 2010). The Panel in Grupo Bimbo noted that “auDRP in many salient respects mirrors the UDRP, and the analysis of the panel in National Dial A Word Registry Pty Ltd … has been generally adopted in the UDRP panel decisions.”

If not related, entities would have to qualify (if they can) by having a “common grievance” which is a more difficult standard. The Panel in National Dial A Word reasoned that

in determining whether to allow consolidation of multiple complainants in a single complaint, a panel should proceed as follows having regard to all of the relevant circumstances. First, the panel should answer the question: do these complainants have a truly common grievance against the respondent? If the answer to that question is ‘no’, consolidation should not be permitted. If the answer to that question is ‘yes’, it is necessary to answer the second question: would it be equitable and procedurally efficient to permit consolidation of complainants? If the answer to the second question is ‘no’, consolidation should not be permitted. If the answer to the second question is ‘yes’, consolidation should be permitted.

In both National Dial A Word and Grupo Bimbo the disparateness among the Complainants was too great to have a “common” grievance even though each Complainant separately had a legitimate grievance against the Respondent. The difficulty is heightened where to the exclusion of every other complainant each has a separate vested right in its own trademark, that is where there exists no linkage by license. The existence of “potential[ly] … different outcomes of one or more domain name disputes based on the differing nature of the rights asserted by the individual Complainants” [Grupo Bimbo] answers the second question posed in National Dial A Word in the negative, namely whether “it would be equitable and procedurally efficient to permit consolidation.” Under those circumstances it would be neither equitable nor procedurally efficient.

Where the disparate complainants do not qualify for a consolidated hearing, they “should not be prevented from subsequently filing complaints in their individual capacities against the respondent and in these circumstances the individual complaints should not constitute re-filed complaints,” Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, D2009-0331 (WIPO May 12, 2009). To note a difference, in Fulham Football Club the Panel found the common grievance element to have been satisfied.

 

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