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Unfamiliarity with / Unprepared for Proceedings under the UDRP

There is a difference, of course, between asserting a claim that cannot possibly succeed in an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) and being unprepared to prove a claim that may have merit with the right evidence; but there is also an overlapping similarity in that complainants are either shockingly unfamiliar with UDRP procedures and jurisprudence (and should have retained counsel who are) or know they have no actionable claim but plow ahead anyway perhaps in the hope their abuse of the proceedings will not be noticed.

The Panels’ exasperation is evident, to take a couple of examples, in Adventure SAS v. Mike Robinson, BlackHawk Paramotors USA Inc., D2019-2489 (WIPO December 12, 2019) involving a dispute over a soured distributorship in which it noted that “those responsible for the drafting of the Complaint [Complainant was represented by counsel] and/or the person who authorised the filing of the Complaint knew that the Complaint should not succeed because on any fair reading of the available facts the Respondent registered the Domain Name in good faith.” In Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp., D2019-2642 (WIPO December 18, 2019) (<nelli.com>) the “Complainant and its counsel also provided no evidentiary support whatsoever to support their argument that the Respondent must have registered and used the disputed domain name in bad faith…. ]T]hey [also] completely ignored the requirements set out in the Policy for establishing bad faith registration and use of a domain name [and] disregarded precedent and unfavorable facts in concluding that the webpage (which makes no connection whatsoever to the Complainant) was an attempt to misappropriate its trademark reputation, and offered no more than unsupported allegations.”

The consensus as to what is expected of complainants (implicit in Adventure SAS and Nelli has been expressed succinctly in a number of memorable decisions: “[Complainant] should at least be minimally versed” and “[i]t 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” [D2012-1555], or “the deficiencies [of proof] must have been obvious to anyone remotely familiar with the Policy” [D2016-0126], or “[i]t is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules” [D2012-2455].

The gamut of mark owners included in these rebukes ranges from the confused (mistaking the UDRP as a trademark court), through the clueless (who ought to have known otherwise) through the hapless (insofar as marshaling proof) to the manipulative (alleging bad faith when the facts contradict the allegations). The “confused” can be forgiven since while domain names are central to their complaint, the claim actually sounds in trademark infringement. The “clueless” are generally not forgiven; they should have known better.

Recent examples of the confused are: Altiplano Voyage v. Terra Holding Ltd. / Pierre Boyer, D2019-2141 (WIPO November 12, 2019) (<voyagealtiplano.com>) and Taffo SRL v. Contact Privacy Inc. Customer 0141464573 / Agenzia Funebre Taffo di Taffo G. & C. SAS Societa/Ditta, D2019-2266 (WIPO November 19, 2019) (taffo.com>). As a general rule, where domain names are incidental to the offense the claim is outside UDRP’s subject matter jurisdiction which is limited to claims of cybersquatting.

In Altiplano Voyage, the Panel notes that “this case presents a more nuanced trademark dispute (at least on the papers presented) than that for which the Policy is equipped.” The Panel also comments on Complainant’s evidentiary deficiencies. In Taffo, the Panel “incidentally notes that the Policy is designed to resolve standard cases of abusive domain name registrations, while the present one is a complex trademark matter that will be more appropriately handled by the Court of Rome before which an Ordinary Proceeding is already pending.” If there is a remedy at all it must be for trademark infringement.

The “clueless” are mark owners whose rights postdate the registration of challenged domain names. They have no claim for cybersquatting under the UDRP (even though they have standing to maintain the proceeding), and no statutory claim or even standing under the Anticybersquatting Consumer Protection Act (ACPA). The possibility that this kind of “clueless” is not clueless at all but deliberately abusive of the administrative proceeding cannot be discounted and is commonly dealt with as such.

A number of recent UDRP decisions illuminate how mark owners attempt to justify their complaints. There is no remedy because, owing to the timing of mark owners’ right, there can be no actionable violation. In Advice Group S.P.A. v. Privacy Administrator, Anonymize, Inc. / Michele Dinoia, Macrosten LTD, D2019-2441 (WIPO December 2, 2019) (<advicegroup.com>) the Panel explains that the “Respondent acquired the Domain Name some two years before the Complainant obtained a trademark, and nine months before the Complainant even filed its trademark application.”) In another case, Gary Chupik v. Shant Sarkuni, FA1910001868583 (Forum November 18, 2019) (<elitemindset.com>) Complainant tried another, equally unpersuasive maneuver  by applying for a trademark, strangely believing (one supposes) that having a trademark is conclusive of a right to the corresponding domain name:

a. the disputed domain name was registered on April 18, 2017;
b. Complainant made unsolicited offers to purchase the disputed domain   name which were rejected by Respondent;
c. Complainant filed his trademark applications with the USPTO on January 30, 2019 after his offers to purchase the disputed domain name were rejected;
d. the filing of the Complaint on or about October 28, 2019.

Complainant appears to have believed that because “he made an offer to purchase the disputed domain name from Respondent” and because the “Respondent refused to sell the disputed domain name to him for the highest price that he was willing to offer” that he had asserted a claim for cybersquatting. The Panel found the conduct sanctionable: “In the circumstances, this Panel finds that Complainant, being aware that he was not entitled to succeed, nonetheless brought this Complaint with the hope that he may secure the transfer of the disputed domain name, after he had failed to purchase same in open commercial arms-length negotiations.”

Other recent Complainants represented by counsel (who ought to have known better!): Pet Life LLC v. ROBERT RIESS / blue streak marketing llc, FA181000181087 (Forum November 11, 2019) (<petlife.com> registered more than 5 years after registration of domain name) and Glovoapp23, S.L. v. Wang Shun, D2019-1986 (WIPO September 30, 2019) (<glovo.com> registered 17 years before trademark right). Complainants in both these cases were sanctioned for asserting claims they could not possibly prove.

The second group, those I call hapless, may have meritorious claims, but either lack proof or have not marshaled what they need to establish bad faith. The inference with deficiency of evidence is that if no proof is offered, no proof exists. The point is illustrated in Assurity Life Insurance Company v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA1911001872882 (Forum December 21, 2019) (<assuritylife.com>): “Complainant asserts both registered and common law trademark rights.  Complainant owns several USPTO registrations but none earlier in time than … March 21, 2006 and so even its filing date postdates the registration of the domain name [May 2004].” However, in this case.

Complainant’s assertion of common law rights is premised, not on proof of public awareness and reputation, but on the above statement, which in turn rests on the claim of first use in commerce date of June 12, 1996 shown in Reg. No. 3,070,343.  That date is provided to the USPTO by a trademark applicant.  There is no proof of a common law trademark by May 2004 when the domain name was registered.

One of the questions here which the Panel frames as a preclusion issue can also be thought of as a credibility issue: if Complainant really believed it had a claim, why did it wait so long to assert it. The Panel noted that “although opinions have differed as to whether the equitable doctrine of laches applies to UPRP proceedings, it has been recognized [that is, the consensus among panelists is] that delay in bringing proceedings is likely to place a higher burden on a complainant attempting to prove a state of affairs long ago.” The same point is also made in NovAtel Inc. v. Registration Private, Domains By Proxy, LLC / Domain Admin, FindYourDomain.com, D2019-1939 (WIPO October 4, 2019) (<novatela.com> and DK Company Vejle A/S v. Cody Favre, C4 Squared, D2019-2676 (WIPO December 17, 2019) (<shopcasualfriday.com>). In NovAtel, “[w]hile the Complainant asserts that its NOVATEL trademark has been in use since 1992, it provides no evidence as to how widely the mark was known at that time or, more importantly, in 2007.” In DK Company Veile, the Panel explains that

[t]he difficulty with that case is that the Complainant has provided no information as to the size or reputation of its business, and such limited evidence as it does provide indicates its business is entirely European. The Complainant says that its CASUAL FRIDAY trademark is “widely known” in the European Union but provides no evidence to substantiate that assertion. There is nothing before the Panel to suggest that a United States retailer would have had any knowledge of the Complainant or, had it carried out searches, would have found any reason to conclude it could not adopt the words as part of a name for use in the United States.

In failing to produce supporting evidence necessary to establish common law rights or the repute of a mark at the time of the registration of the domain name or any other indicia of consumer recognition, the inference must be that it has none. The consensus is as the Panel states in Adventure SAS, namely that “the natural inference in the absence of any evidence to the contrary would be that the Respondent registered the Domain Name in good faith.”

The third group, less hapless I think because they simply do not have enough information until the response is filed, are mark owners complaining of domain names held or used by commercial businesses offering bona fide goods or services (distinguishing these respondents from investors reselling domain names). Two recent examples are Lexon v. Registration Private, Domains By Proxy, LLC / Surety Management, D2019-2365 (WIPO December 12, 2019) (<lexon.com>) in which Respondent offered proof that “the Disputed Domain Name was acquired as part of a legitimate business transaction when the Respondent purchased the Lexon Surety company and its trade marks”; and DSN Software, Inc. v. Rob Bay, FA1910001865961 (Forum December 10, 2019) (<practicesnapshot.com>) in which the descriptive phrase identified the services Respondent offered.

Included in the hapless group are complainants whose marks are composed of common words, descriptive or common phrases, and arbitrary letters (to distinguish marks composed of coined words or nationally or international famous). These strings are notoriously hard to prove domain names were not registered for their semantic (rather than trademark) values. In Service Spring Corp. v. hao wang, D2018-2422 (WIPO December 17, 2019) (<ssc.com>) the “Complainant submits that bad faith should be inferred from (i) the Respondent’s use of a privacy service, (ii) the Respondent’s provision of incomplete address details in the WhoIs record and (iii) the Respondent’s failure to respond to the Complainant’s cease and desist letters,” but these factors, even if considered, are not conclusive of liability; they do not add up to bad faith.

One final note, a reminder, that these cases rejecting claims of cybersquatting represent less than 10% of all disputes that go to award. To the extent that strings of words are common in the language community, unsurprising and common expressions, descriptive phrases, not clearly associated with any one commercial user there is a corresponding increase in the evidentiary demand for proof of bad faith registration; bad faith use alone does not prove cybersquatting under the UDRP if there is no proof of bad faith registration.

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, 2nd Edition 2019). The treatise is available on Amazon and Barnes & Noble.  If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting inquiries@legal cornerpress.com or gmlevine@researchtheworld.com. The discount will not be available from Amazon and Barnes & Noble.

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