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Domain Names Combining Complainant’s Marks with Marks of Third Parties

Where there are multiple, related complainants each will be entitled to the domain name in which it has a right and a right to the remedy it elects. However, where the accused domain name is composed of trademarks owned by different parties, but only one is complaining the question turns on whether the complainant is entitled to the remedy it elects. The Panel in Kabbage, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. – / Robert Hanssen, Ridiculous File Sharing, D2015-1507 (WIPO November 20, 2015) (<kabbage4>) notes that Panels are split on whether the proper remedy is cancellation (without consent from the other trademark owner) or transfer (with consent), citing its own prior decision in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, D2012-1491 (WIPO September 12, 2012) (<iponein>).

The sole panelist in Kabbage and Incase Designs notes that the issue “does not arise frequently” and in its “view, a complainant ideally should try to obtain the third party’s consent before seeking transfer,” although there may be reasons for not doing so. Interestingly, the Panel in deciding the second case changed its mind from the first, and this is worth noting. I say this not because it may appear to support complaints sometimes heard about panelists that they are inconsistent but for the reasons the Panel gives for the change.

Because the Panel’s analysis and its views in Kabbage on the UDRP as a jurisprudence and process are important I thought the decision deserved to be highlighted. The decision has already been noted by Doug Isenberg, Complainant’s counsel in Kabbage and important blogger (GigaLaw) on subjects having to do with cyber matters and the Internet. See The reason for a further note on the decision is not because the Panel changed its mind, but because it believed strongly in the principles of consistency and predictability of the UDRP process. This is the takeaway from Kabbage.

In Incase Designs the Panel had concluded that the proper remedy was cancellation (absent consent from the other party); in Kabbage the Panel concluded it was “willing to reach a result different from that embraced in the Panel’s earlier decision three years ago.” There are two interconnected, substantial reasons for the Panel’s change of mind:

[First] The Panel . . . observes that while authority is divided, there is a growing trend among UDRP panels to support transfer in the absence of third-party right holder consent. A few of the more recent decisions also grant transfer in circumstances that the Panel finds analogous to this proceeding.

[Second] This Panel recognizes that to the extent practicable, the Policy should be interpreted in a consistent manner. The Panel also believes that the remedy of cancellation, for sound reasons, is disfavored by UDRP panels and should be avoided when possible. Particularly where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders [that remedy should be respected].

Both the observation about a “growing trend” and the principle for applying UDRP jurisprudence “in a consistent manner” are views critical to the success of the UDRP process. The issue of consistency and predictability was quickly recognized as a key concern within the first year of operation. There is no appeal procedure within the UDRP, so no second-look to correct errors. A general view formed early in the jurisprudence was that the UDRP should not be a roulette wheel. It deplored a scattershot approach to decision making because it exposed the UDRP to criticism of inconsistency and unpredictability. “Counseling one who is considering filing a Complaint should consist of more than, ‘It depends what panelist you draw.’” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001):

The majority believes that the UDRP procedure should be governed by the rule of law, rather than by the individual consciences of the panelists. If a principle enunciated in a decision is well-reasoned and repeatedly adopted by other panels, the majority believes that absent compelling reasons which require a determination otherwise, the rule established should be respected. The majority believes that potential users of the UDRP are entitled to some degree of predictability.

As a general proposition the UDRP is a consensus based jurisprudence. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition paragraph 4.1 (“The UDRP does not operate on a strict doctrine of precedent”) but it is rare that parties fail to cite cases in support of their contentions and Panels in their decisions. The goal (as stated in many UDRP decisions) is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding. Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010):

Whether [the consensus in holding that the acquisition and offering for sale of domain names and/or using them to provide links to other sites may well (provided it is not directed at trademark misuse in breach of the Policy) be a legitimate business] is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive.”

It is to this principle that the Panel in Kabbage also adheres.  Inconsistency simply to express a personal view undermines predictability, and with it the goal of the UDRP enterprise.

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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