Correspondence between the parties can prove decisive when the respondent makes admissions against interest, although the alleged prejudicial “statement must be considered in the context of the email of which it is a part,” Estate Diamond Exchange, Inc. v. Thomas Hull, D2010-1171 (WIPO September 16, 2010). In context in this particular case the statement did not rise to the level of an admission. The Respondent (befuddled) wrote: “I am a busy business owner trying to keep two jewelry stores afloat in a depressed market I really don’t have the time or the means to fight these people on this. You seem to have knowledge in this field and I believe you to be very fair. Can you give me advice on this?? I might even be willing to sell it if the price was right.”
Willingness to sell the domain name to a trademark holder is one of the indicia of bad faith, but the complainant has to prove that it has a trademark right; if it does, it has to prove that the respondent lacks rights or legitimate interests in the domain name. In Estate Diamond Exchange the disputed domain name, <estatediamondexchange.com> is a descriptive term. Standing is not conferred merely by using a term in trade. There has to be reliable evidence that “relevant purchasing public has come to recognize ‘Estate Diamond Exchange’ as a mark – that is, a symbol that distinguishes the Complainant’s second-hand jewelry services from those of others.” The Complainant failed to prove any common law right to the trademark.
In Estate Diamond Exchange, the correspondence was not lethal. In other circumstances, correspondence between the parties can be a fertile area of evidence, generally in complainant’s favor when the respondent fails to understand the consequences of his words. Communications prior to filing the complaint are part of the record whether or not a claim of privilege is asserted. Words can be revelatory of the respondent’s motivation and position. The Complainant in Red Bull GmbH v. Carl Gamel, D2008-0253 (WIPO April 14, 2008) sent the Respondent a cease and desist letter prior to filing of the Complaint. The Respondent’s first response was “Please sue me!” and later “Try this I own ‘www.redbullsucks.com’ ‘http://www.redbullsucks.com’ and I will continue to promote my business! A.C.T. is the best an thats that! SEE YA!!! Carl B. Gamel II.I” His second response is not reported.
As a general rule, civil practice rules forbid disclosure of settlement discussions as antithetical to resolution of disputes, which are encouraged. Generally, however ICANN Panels with some exceptions have opted not to exclude “without prejudice” correspondence, although there may be reasons. For example, “where the country in [which the parties reside] adopts the doctrine of without prejudice privilege and both Parties are from that country, the doctrine must have more weight [than it would otherwise if the parties resided in different jurisdictions],” GM Holden Ltd. v. Bradley John Lawless, DAU2010-0010 (WIPO May 23, 2010) . But, that case was decided under a country code policy.
The WIPO Overview asks and answers the following question, Paragraph 3.6: Can statements made in settlement discussions be relevant to showing bad faith? Consensus view: Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. Assertions and statements made in communications prior to the initiation of a UDRP proceeding by or between the parties or their counsel are admissible regardless of notations of confidentiality.” The Panel in Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 21, 2001) (U.S. residents) reasoned that the history leading up to the adoption of the Policy suggests that an offer to sell, absent a legitimate interest and absent contrasting evidence of good faith, is so likely to be evidence of bad faith and use that its exclusion is likely to result in injustice.
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. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.