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Maintaining a UDRP Proceeding Against Multiple Respondents

Paragraph 3(c) of the Rules for UDRP provides that a “complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder.” Alleging that multiple domain names are jointly controlled is not sufficient to satisfy the rule. Deckers Outdoor Corporation v. Karen McDougall, Frances Kirwan, Richard Abbots, Nicola Hammill, Sadika Ekemen, Stephen Gould, Christina Papadaki, Felicity Poole, Wang Changgui and [redacted], FA0908001281082 (Nat. Arb. Forum November 30, 2009). Failure to prove joint control requires dismissing a complaint against unrelated respondents. Paragraph 4(f)(ii) of the Nat. Arb. Forum’s Supplemental Rules provides that “[i]f the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel.”

The issue was succinctly noted in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, DAU2008-0021 (WIPO March 6, 2009), a case decided under the .au Dispute Resolution Policy. The Panel held that in determining whether to allow consolidation of multiple complainants in a single complaint, a panel should proceed as follows having regard to all of the relevant circumstances. First, the panel should answer the question: do these complainants have a truly common grievance against the respondent? If the answer to that question is ‘no’, consolidation should not be permitted. If the answer to that question is ‘yes’, it is necessary to answer the second question: would it be equitable and procedurally efficient to permit consolidation of complainants? If the answer to the second question is ‘no’, consolidation should not be permitted. If the answer to the second question is ‘yes’, consolidation should be permitted.

In Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd., D2009-0331(WIPO May 12, 2009) the Panel looked for answers to two factors: ( i) whether the disputed domain names involve readily identifiable commonalities; or (ii) whether there is a clear pattern of registration and use of all the disputed domain names. In Fulham Football Club there were “readily identifiable commonalities.” That was not the case in National Dia A Word. Nor was it the case in Deckers Outdoors.

The Complainant in Deckers Outdoor owns trademarks for the UGG marks in a number of jurisdictions. It alleged that the entities were operating under several aliases, but failed to present evidence supporting this allegation. Of the ten Respondents, one only is identified as the domain name holder of 6 of the disputed domain names. One other, whose name is redacted because of identity theft was named in the Whois directory as the holder of one domain name. Eight Respondents (involving 10 domain names) were “not subject to further consideration by [the] Panel.” Paragraph 4(f)(ii) concludes that “no portion of the filing fee will be refunded.” The lesson is that unless there is evidence of linking, the complainant should name one respondent per complaint. The penalty is delay and forfeiture of the filing fee. The Respondent holding the six domain names used them to sell counterfeits of Complainant’s goods; those domain names were ordered transferred.

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