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Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names’ histories. While it doesn’t compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). How it’s used (and why the Wayback Machine should be in a party’s toolkit) for supporting and opposing claims of cybersquatting is illuminated in a number of recent UDRP cases.

To give some perspective on the use of historical screenshots, I’m going to briefly consider two of several recent UDRP cases, Dreamlines GmbH v. Darshinee Naidu / World News Inc., D2016-0111 (WIPO March 8, 2016) (<dreamlines.com>) in which Respondent prevailed and Heraeus Kulzer GmbH v. Whois Privacy Services Pty Ltd / Stanley Pace, D2016-0245 (WIPO May 2, 2016) in which Complainant prevailed to show how screenshots have been successfully used by both parties, then turn to a recent decision that summarizes the basis and evidentiary requirements for admission in federal court, Marten Transport, Ltd v.PlattForm Advertising, Inc. 14-2464 (D.C. District of Kansas April 29, 2016).

Closely examining the database of UDRP decisions indicates that panelists’ positions on Wayback screenshots has been consistent in accepting them as direct evidence from the inception of the Policy as true representations of domain name contents at the time of their capture without the need for authentication. This has not always been true in U.S. federal courts, but the Marten Transport decision offers a clear exposition for judicial notice as well as string-citing decisions from 2013 in different circuits that have reached similar conclusions in taking judicial notice of screenshots.

The domain name in Dreamlines was registered many years prior to Complainant acquiring its corresponding trademark, but the critical question in many of these cases rests on the original and current identities of registrants and whether there has been a transfer of registration following first use of the trademark in commerce. Since the second named Respondent answered the complaint it suggested the possibility of its being a successor registrant. In the Complainant’s mind the possibility was reinforced by recent changes to the website. (Bad faith for successor registrants is tested from their registration; not from the original registration).

However, using a combination of communications from the registrar that the domain name “ha[d] been ‘under [Ms. Naidu’s] ownership” since December 15, 1997 and has been held in the same account since inception with the Registrar [or its subsidiary] from June 27, 2000″ and current and historical Wayback screenshots Respondent proved that there had been no change of registration.

Regarding the change of use “(which is in any case contradicted by the ‘Wayback Machine’ evidence produced with the Response) [while it] could occur on the heels of a change in ownership of the disputed domain name . . . [the domain name] could not have been registered in bad faith in 1997 even if a recent change in use had given rise to use in bad faith so long as there is an unbroken chain of registration.” An “unbroken chain” is conclusive proof of priority. The Panel also implies that even if there had been a change to bad faith use it would have been insufficient to establish abusive registration under the UDRP because of the conjunctive requirement. Not implied, but assuming the same facts—that is, bad faith use following good faith registration—would be actionable under the ACPA.

In the second case, the KULZER trademark dates from 1988; <kulzer.com> was originally registered in 1995 but was allowed to expire at some point and Respondent acquired it in 2008, therefore Complainant had priority. In its response the Respondent appears to have initially fudged the operative facts by alleging interest dating from the original registration but was compelled to correct the record in response to the Panel’s Procedural Order:

The Respondent, in his Response states, “Respondent, a Texas USA resident, registered the subject domain name <kulzer.com> on December 6, 1995 (21 years ago). At the time of registration of the Domain Name, the Respondent had no knowledge of the Complainant’s European Mark.” The Response then makes various arguments based on the Complainant’s extensive delay in filing the Complaint and alleging Reverse Domain Name Hijacking.

However,

Following the Procedural Order, the Respondent acknowledged that he registered the Domain Name in 2008 (through a Namejet Auction on January 13, 2008), not 1995 and excuses the “mistake” on the basis that the Complainant made that claim. A proper reading of the amended Complaint is that the Complainant made no such claim.

Also in his Response Respondent produced a current screenshot of his website showing that the domain name “redirects to a connected parking page featuring a wide range of generic links having nothing to do with the Complainant and thus claiming that the Respondent’s Website is not targeting the Complainant.” Again, the Respondent is caught fudging the facts because (as the Panel notes) “it is apparent that the screenshot of the Respondent’s Website exhibited in the Response reflects new content generated following the filing of the Complaint.”

However, it is not bad faith for resellers to register surnames even where complainants have priority, but it may be bad faith based on the circumstances of use such as including links to competitors in Complainant’s business area, dental products. In fact the Wayback screenshots showed that Respondent’s Website for the preceding years “concentrated upon” the dental products area. Given this history, offering the domain name for sale was further proof of bad faith use, and when the Complainant has priority bad faith registration can be inferred.

In the one area in which Respondent could have won its point, namely the genericness of surnames it again failed on the facts:

The Respondent has also stated that “the term Kulzer is a common family name that has been used by many different companies and individuals for many different purposes pursuant to a Google search” and exhibits the result of a Google search, which shows inter alia that all but one or two of the entries on the first page relate to the Complainant. He says that he acquired the Domain Name for its value as a family name and for inter alia email purposes

This would ordinarily be a good defense, but Respondent

provides no evidence to support the assertion that his portfolio of domain names is mainly composed of domain names comprising surnames, nor does he produce any evidence to show that his use of the Domain Name has been for the benefit of or directed towards individuals having the Kulzer surname.

Acceptance of Wayback screenshots initially had a mixed history in federal courts on the issue of authentication and whether and when to take judicial notice. But the 10th Circuit held in 2007 that “[i]t is not uncommon for courts to take judicial notice of factual information found on the world wide web,” O’Toole v. Northrop Grumman Corp., 499 F.3d 1218. While the O’Toole decision did not concern the Wayback Machine specifically it lays a foundation for self-authenticating screenshots.

Nevertheless, other circuits may require authentication before taking judicial notice. The court in Marten Transport cited My Health, Inc. v. General Electric Co., 15-cv-80 (W.D. Wis. December 28, 2015) in which “the court declined to take judicial notice of Wayback Machine documents on the basis that the Seventh Circuit had previously required authentication by an Archive employee.” However, in Marten Transport the court noted that “not only does the Tenth Circuit not expressly require authentication for Wayback Machine documents … it sanctioned judicial notice of factual information on the Internet.”

Whether authentication is required before taking judicial notice the court in Marten Transport pertinently that defendant’s opposition failed to explain

how or why [the screenshots] are not accurate. As noted above, PlattForm complains that the Wayback Machine does not always capture all of the information on a site, but it has not offered any reason to believe that the Wayback Machine adds information that was not on the site at that time. In O’Toole the Tenth Circuit held that the district court had abused its discretion in not taking judicial notice in such a case. (Emphasis in original).

If the use of the Wayback Machine does not require authentication (as it does not under the UDRP) then the court “must take judicial notice of the fact that Marten’s information did appear on PlattForm’s websites as shown in these screenshots.”

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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