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Respondents Lose for Lack of Any Defensible Proof

Respondents prevail in approximately 12% to 15% of cybersquatting disputes overall, but a higher percentage prevail if they appear and offer persuasive evidence either establishing rights or legitimate interests or rebutting bad faith. When they fail (whether for not appearing or answering the complaint) it is for lack of any defensible proof. Asserting good and denying bad faith is not proof of any right or legitimate interest in disputed domain names. Although default is not an admission of liability it’s generally conclusive on the issue of rights or legitimate interests, and if the domain name postdates the trademark (and is not a dictionary word or common descriptive phrase) respondent will almost certainly lose on the bad faith issue. Assuming evidence is well marshaled, negative inferences generally favor complainants when respondents default.

Let’s look at the two possibilities of indefensible positions; first, when respondents appear and answer, and below when they default.

Complainant (a maker of watches) in Audemars Piguet Holding SA v. Oliver Bisko, FA160100 1656382 (Forum February 15, 2016) owns ROYAL OAK which it uses for a line of watches; Respondent registered <royaloak.watch>. He defends on two theories: linguistic and historical. On the linguistic theory Respondent claims that the “domain is comprised of the generic terms ‘royal’ and ‘oak,’” before concluding that the “domain is therefore generic and Complainant does not have exclusive use of the terms in any context.” Additionally, the TLD ‘.watch’ does not increase confusion because Respondent is using the TLD as a verb meaning to ‘look at or observe’ rather than in connection with timepieces.”

On the historical theory Respondent fancifully claims that the “royal oak” he has in mind refers to an incident in British history in 1651, the final battle of the English Civil War: “Respondent plans to use the domain to create an art project that will commemorate the 365th anniversary of King Charles II hiding in an oak tree (the ‘royal oak’) after the Battle of Worcester. Respondent did not have any content on the disputed domain because he intended the art project to be a surprise for the British royal family.”

Facts against Respondent in Audemars Piguet include 1) TLDs are nouns, not a verbs; 2) made no active or demonstrable preparations for using the domain name “before any notice to you of the dispute”; 3) at the same time it registered <royaloak.watch> it also targeted other makers of “timepieces”; and 4) on the offering for sale issue it claims it “never intended to sell the domain and only offered to exchange the project (including the domain) for one of Complainant’s watches after Complainant approached Respondent about selling the domain.”

The second illustration for an appearing respondent is Morgan Stanley v. Alpine Capital Mortgage / Greg Hogan, FA1601001655777 (Forum February 17, 2016). In this case, Respondent registered <morganstanley.pro>. It alleged that “[t]he names ‘Morgan’” and ‘Stanley’ are common and are not to be construed solely for financial services. Additionally, the disputed domain has not yet officially launched.” While it’s true that “Morgan” and “Stanley” are common, they are not common when joined. However, Respondent’s counter-narrative fails because it “uses the disputed domain name to profit from Internet users’ confusion by displaying links to products and services that are in direct competition with Complainant’s business.”

Facts against Respondent in Morgan Stanley are essentially 1) the disconnect, the inconsistency between what is being said and what is being done; and that 2) it “engaged in a pattern of such conduct”, that is “[o]n or about the same date he registered the disputed domain name, Respondent registered several other domain names incorporating the famous marks of other financial institutions, such as AMERICANEXPRESS.PRO, CAPITALONE.PRO, JPMORGANCHASE.PRO and LENDINGTREE.PRO.”

Rather than the evidence supporting Respondents’ claims in Audemars Piguet and Morgan Stanley, it actually undermines their disavowals of bad faith. In the two next illustrations, the Respondents defaulted thereby leaving it to Complainants to make their cases. What first must be noticed is the shift of focus to the content of the websites to which the domain names resolve and, perhaps, any correspondence between the parties prior to the commencement of the proceedings.

In Maryland State Lottery and Gaming Control Agency v. Whois Privacidad SA de CV / Iris Milady Soto Puerto, D2015-2325 (WIPO February 16, 2016) (<marylandlottery.com>) although the website “profusely uses the title ‘Maryland Lottery’, [it] does not relate at all to this lottery. Instead, the site contains links to websites of providers of competing lottery games, which Respondent is using to presumably extract a profit via a click-through scheme.” The use supports an affirmative finding that Respondent lacks rights or legitimate interests in the domain name under paragraph 4(a)(ii). A party lacking rights or legitimate interests may still be able to maintain the domain name if there is no proof of bad faith registration, but here the pretense of being “Maryland Lottery” supports a negative inference of bad faith registration:

The Panel agrees with Complainant that by using the disputed domain name as described, Respondent has intentionally attempted to attract, for commercial gain, Internet users presumably looking for Complainant’s “Maryland Lottery” to its website and other on-line locations, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

The final case, Central Garden & Pet Company v. Ryan G Foo, PPA Media Services / Domain Admin / Whois Privacy Corp., D2015-2268 (WIPO February 9, 2016) () illustrates another use of the negative inference. Complainant had served a cease and desist notice prior to commencing the administrative proceedings to which Respondent failed to respond: “According to earlier UDRP decisions ‘non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.’” Failing to respond is not necessarily fatal, but it becomes fatal when “a search in the publicly available UDRP decisions, reveals other forty-two recent UDRP decisions made against the Respondent covering a broad range of domain names, suggesting that the Respondent is, in this Panel’s opinion, a serial cybersquatter and that consequently his behaviour leads to an inference of bad faith.”

One of the unknowns in default cases is the possible strength of counter-narratives, although this is not to suggest (and certainly not in either Maryland State Lottery and Central Garden & Pet) that the decisions are not based on neutral assessments of the facts, but there are cases (admittedly, not many!) in which the counter-narratives could have made a difference. I can say this on the strength of counter-narratives presented in appearance cases in which respondents are represented by counsel who know how to marshal the facts in support of their clients’ positions. On this there are a number of outstanding cases.  See for example Kosmos SAS v. Domain Hostmaster – Customer ID: 48322848242624 / Domain Admin, Ashantiplc Limited, D2015-2198 (WIPO February 19, 2016).

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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