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UDRPs Evidentiary Demands

See Anthology of Commentaries — 2014

The UDRP is essentially composed of three blocks of checklists that lay out the evidence each party is expected to offer on its claim or defense. Paragraphs 4(a)(i – iii) detail the requirements a trademark owner must satisfy to prove its claim: it has to have standing to maintain the proceeding; it has to demonstrate respondent lacks rights or legitimate interests in the domain name; and it has to prove respondent registered and is using the domain name in bad faith. Paragraphs 4(b) (i – iv) detail the “shalt nots” and paragraphs 4(c) (i – iii) detail the defenses to a cybersquatting claim. The 4(b) and 4(c) lists are nonexclusive although in practice they essentially cover the world of possibilities. It is not unlawful per se to have registered a domain name identical or confusingly similar to a currently (or allegedly) existing trademark if complainant acquired its trademark after registration of the domain name.

Several recent cases from the Asian Dispute Name Resolution Centre nicely illustrate the various aspects of the evidentiary demands: time lapse (is there a laches or estoppel defense?), Television Broadcasts Limited v. Shen, Ying-Wei/The Vacation Bacchic Studio, Perfect Privacy, LLC, HK-1400665 (ADNDRC December 11, 2014) (<tvbs.com>, Transferred); trademark right (does a domain name lessee have trademark rights?), and Asia Charts Pte. Ltd., Singapore v. Neuronet Systems Pte. Ltd., Singapore, KL-1400018 (ADNDRC December 11, 2014) (<asiacharts.com> Complaint dismissed). A third case Adodis Technologies Private Limited v. Eric Reao, KL-1400023 (ADNDRC September 19, 2014) (<adodisfraud.com>, Complaint dismissed) covers a palette of issues ranging from secondary meaning (what needs to be proved for common law trademark rights?) and free speech (what qualifies, the domain name or the content?) to business consequences and tarnishment.  According to Complainant “[t]he person who created [the website] has a clear intention to defame the Complainant’s position in the market as a leading web development company. As a result of the Disputed Domain Name, the Complainant is losing clients.”

As a general proposition respondents do not have to prove good faith. Complainant carries the ultimate burden of proving bad faith registration and use. Whether complainant prevails is highly fact specific. For example, equitable defenses are rarely applied but if they are it is not necessarily under a laches or estoppel theory. Complainants fail because they are unable to prove bad faith registration. In the case of Television Broadcasts, Complainant prevailed notwithstanding a 16 year lapse because the evidence established that the domain name had been used since its purchase to traffic on Complainant’s reputation and goodwill. Respondent raised an interesting but ultimately frivolous defense that it was not bound by the UDRP since the domain name was registered before the implementation of the UDRP.

This “not bound defense” was raised and rejected in a number of early cases (2000 and 2001) and thereafter slipped from the lexicon of defenses. It is fruitless (as the Television Broadcasts Panel points out) for two reasons: first, Respondent’s agreement with the registrar provides that it is bound by any revision or change in the terms of the registration agreement which would have come into effect on renewals; and second because the evidence proved respondent registered the domain name with the complainant “in mind.”

In Asia Charts Complainant leased the domain name in exchange for using Respondent as an exclusive provider of “end-of-day” data services. It commenced the UDRP proceeding after it discontinued using Respondent (a breach of contract unless it had no further use of the domain name) and Respondent repointed the domain name to its own website. Although not clearly expressed Complainant based its argument on an estoppel theory. It contended that “It was an implicit understanding between the Complainant and the Respondent that the Domain Name was for the exclusive use and business of the Complainant.” Unsaid is that the domain name was registered prior to the creation of Complainant’s business. In any event it had no trademark right to support standing to complain and, therefore, no actionable claim for cybersquatting.

Adodis presents a range of issues. The decision makes interesting reading in part because the Panel decided to discuss each of the issues even though it could have abridged the decision after finding Complainant failed on the standing element: “[W]hile the Disputed Domain Name is found to be identical or confusingly similar, the Complainant has ultimately failed the first element given the absence of any evidence to establish the presence of secondary acquired distinctiveness of the ‘ADODIS’ trademark.” I will limit my comments only to the business and tarnishment issue.

Panelists have different views about applying a respondent’s free speech rights. There is a split on whether the free speech protects the domain name or content. In Adodis the domain name, <adodisfraud.com> qualifies for protection because it adds an appropriate qualifier and the content is consistent with the semantic expectation for the website. Thus,

Whilst the Complainant alleges that the Respondent is hampering its business and has a clear intention to defame the Complainant’s position in the market as a leading web development company, the Complainant has failed to put forward any evidence to support this stance. On the contrary, emails from the Complainant to the Respondent sent in September 2013 appear to admit that there is basis to the complaint made by the Respondent with regard to the services rendered by the Complainant.

To make out a case for tarnishment requires proof not of “hampering … business” but populating the website with “link[s] [to] unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark,” citing Britannia Building Society v Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001). This kind of reception is not very different from what a plaintiff would expect in a U.S. federal court action.

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

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