We associate opportunism with respondents, but it equally describes a class of complainants who overreach their trademark rights in an attempt to capture prior registered domain names. The tactic may even be successful where the respondent fails to respond to the complaint. Between 75% and 80% of UDRP filings are uncontested, which gives ample opportunity for complainants to imply more than they have. Who would know that pleaded allegations were misleading if not tested by denial and contrary proof? The Complainant in Credit Europe Bank N.V. v. Peter Yu, D2010-0737 (WIPO July 14, 2010) decided it was worth the risk of commencing a proceeding without disclosing a fact “crucial to the merits of [its] case.” The concurring panelist concluded that the Complainant was using the UDRP proceeding “as a less expensive, quick-and-dirty alternative to an infringement action or other legal claim.”
In the concurring panelist’s view “[s]everal undisputed objective facts require such a finding.” The first is that the Complainant pleaded that it had been in business since 1994 without disclosing that it “did not begin using its current Credit Europe designation until 2006 or 2007.” The Respondent had registered the domain name several years earlier. “[T]his is an inexcusable omission that is misleading in the extreme … [and which] cannot be squared with Complainant’s certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate . . .”
The implication in the pleading that the trademark preceded the domain name is so affirmative that absent proof that it was (in fact) later acquired it would be impossible to detect. That is surely one of the reasons for the concurring panelist’s scolding. “I write separately because, unlike my colleagues, I believe the filing of the Complaint in these circumstances requires a finding by the Panel ‘that the Complaint was brought in bad faith’ and ‘constitutes an abuse of [this] administrative proceeding,’ Rules, paragraph 15(e).” The scolding is also directed at the professional representative. Paragraph 3(b)(xiv) of the Rules tracks Rule 11 of the Federal Rules of Civil Procedure. It reads: “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by good faith reasonable argument.” But, the Panel explains,
The Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.
The professional representative “pitched” his client’s case on a totally untenable theory that “my client’s interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].” This raises ignorance of the UDRP jurisprudence and complicit deception to an unacceptable level. The “Complainant, or Complainant’s representative, seems to believe not only that under some inchoate and undisclosed standard that Complainant has a greater entitlement to the domain name than Respondent, but also that this belief justifies relief in a UDRP proceeding.” It does not, and for the concurring panelist it justifies “the limited censure available to the Panel under the Policy and the Rules, if only to deter similar conduct in future. I would include a finding in the Panel’s opinion that the Complaint was brought in bad faith and is an abuse of this administrative proceeding.”
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com