The two major providers of arbitration services for adjudicating cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), the World Intellectual Property Organization (WIPO) and Forum, issue daily lists of decisions. In approximately 90% of those disputes the registrations cannot be described as anything less than mischievous in acquiring second level domains incorporating well-known or famous marks. Rights holders generally prevail for good evidentiary reasons; they also lose for failing to prove their claims. Domain name holders prevail when they either have rights or legitimate interests (which is for them to prove) or the evidence is lacking that they registered and are using the domain names in bad faith. UDRP jurisprudence does not play favorite.
I thought it instructive to select a handful of decisions from the first days of August, without any ulterior purpose than examining some ordinary days’ catches. For August 1 WIPO had 9 decisions comprising 8 transfers (including <aeg.life> and <jcrewsaleoutlet.com> and 1 denied (<intra-lock.nl>, not in English, not read). The Forum had 5 decisions comprising 4 transfers (including <skechersoutlets.us.com> and <two-guess.com> and 1 denied <nutek international.com>. For August 2 WIPO had 15 decisions comprising13 transfers (one in Chinese, not read) (including <carefusion.net>, <papajohns.eu>, and <cheapstylight.com>) and 2 denied (<shoredigital.com> and <reglit.com>. The Forum had 7 decisions all transfers (including a complaint of 25 “USPS” domain names (the U.S. Post Office is a frequent target), <shopular.app>, and <lyft.taxi>). For August 3 WIPO had 8 decisions comprising 7 transfers (including <gaychatroulette.com>, <insideadvantagegeorgia.com> and <easyflowers.com> and 1 denied with sanctions for reverse domain name hijacking (<fertiplus.com>). The Forum had 5 decisions all transfers (including <nestleusa.us> and <wordpresssupport.online>. Score: 49 transfers, 5 domain names remain with respondents (a hairsbreadth under 90%).
All the transferred domain names on these three days’ lists incorporate marks generally recognized by ordinary consumers as sources of goods or services associated with complainants even if some of the marks hardly ascend to the “famous” rank. Except for <easyflowers.com> (vigorous defense but losing argument) 48 of the respondents defaulted. Respondents also defaulted in two of the denied cases, <shoredigital.com> and (<nutekinternational.com>, but nonetheless prevailed (despite their silence) because the record contradicted Complainants’ contentions of cybersquatting, for the unassailable reason that the domain name registrations predated Complainants’ acquisitions of their marks. While complainants whose marks postdate domain name registrations have standing to maintain a UDRP they have no actionable claim (intentionally emphasized).
As a reminder of the architecture of the UDRP process. Complainants have the burden of proving each of the three requirements. Bauglasindustrie GmbH v. Easyspace Privacy / Pietro Guarino, Glass Block Technology, D2018 -0899 (WIPO July 24, 2018) (<reglit.com>. Respondent appeared, complaint dismissed):
The Panel notes at the outset, for the benefit of those intending to pursue a case under the Policy, that Complainant asserted in its Complaint that “Respondent’s lack of rights or legitimate interests in the use of the Domain Name renders the issue of a bad faith acquisition unnecessary to be considered.” That statement is incorrect. (Emphasis added).
Similarly, Janice G. Montanus v. Douglas Moxley, FA1806001792832 (Forum July 31, 2018) (<nutekinternational.com>. Respondent did not appear but complaint dismissed):
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
For parties either asserting cybersquatting or defending against such claims it is important they have a grasp both of the process of decision-making and the analytical tools panelists use in excavating intention (cybersquatting in an intentional tort). Decision making proceeds in stages. Complainants either have rights or they do not. (For unregistered marks complainants have the extra burden of proving secondary meaning. No examples in these 3 days’ lists). Only if rights holders survive the first test can they proceed to the second, namely proving that respondents lack rights or legitimate interests in the subject domain names. Then, and only then, if complainants pass the second test can they proceed to the ultimate step of proving registration and use in bad faith.
At the outset, Panels receive packages of facts that are well or poorly assembled and other times presented with contentions that lack support of direct evidence. Decisions are based on the record; not on unproved assertions; and it is from the record that Panels draw draw positive or negative inferences. Consider “silence” as a factor in determining rights. There are two kinds: failure to appear for respondents and failure of proof for complainants. Silence has consequences.
In the <aeg.life> dispute, for example, AB Electrolux v. Kirill Urusov, D2018-1275 (WIPO July 25, 2018) (default in appearance), it is possible (admittedly implausible, but nevertheless an argument) that an appearing respondent could have argued that “aeg” is a random string of letters; and, since the top-level domain “life” has no particular relationship to Complainant’s business that the domain name was acquired in good faith for a variety of possible buyers in diverse trades. Without such an argument supported by appropriate proof, the Panel found cybersquatting. I mention this because there have been three-letter domain names undefended where an appearance and explanation could have resulted in a different decision (, for example, Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures, FA1710001753342 (Forum November 7, 2017) (Domain name registered March 15, 1994).
The underlying principle follows, namely that failure to explain motivation (rebutting intention to infringe) supports an inference that there is no explanation to give. In AB Electrolux while Respondent’s silence by default is not dispositive it left a noisy footprint in the record:
In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademark and falsely pretended to be official Complainant’s local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products.
What is true for respondent is equally true for complainant. Failure of proof is another kind of silence. When a complainant alleges a domain name is registered in bad faith, it must follow through with evidence that proves it to be so. Panels expect a follow-through of proof and when there is none it supports a negative inference. The absence of proof is like a negative or absent fact: it applies to complainants when they fail to provide evidence.
An example is Ferm-O-Feed B.V. v. Domain Manager, eWeb Development Inc., D2018-1112 (WIPO July 30, 2018) (<fertiplus.com>). The decision essentially turns on Complainant’s failure of proof. Given the facts, Complainant should have known that it could not succeed:
First, the Complaint provides virtually no information about the nature or extent of the Complainant’s business. The Complainant’s Annex 7 is said to evidence “worldwide use” of the Complainant’s trade mark, but this exhibit in fact consists of a hotchpotch of unexplained documents, most of which are undated and many of which are untranslated. For example, there are photos of stands at exhibitions, but with no indication of where or when they were taken and what they are supposed to demonstrate. To the Panel, this exhibit is largely incomprehensible; certainly, it falls well short of establishing an extensive worldwide reputation, even in its specialised industry, at the time the disputed domain name was registered in 2013, or indeed at any other time.
Sometimes passive holding (inactive use) is found to support bad faith Ebates Performance Marketing, Inc. v. Eric Ye / Eric, FA1806001794302 (Forum July 31, 2018) (<shopular.app> and at other times it does not as noted in <fertiplus.com>. It all depends on proved (as opposed to contended but unsupported) facts.
The most complex case on the three-days’ lists is Hebe.com.au Pty Ltd v. WHOIS AGENT / DOMAIN ADMIN / READY FLOWERS LIMITED, D2018-1028 (WIPO July 30, 2018) (Respondent vigorously defended its right to <easyflowers.com>, but the decision did not turn on the dictionary words. Rather, it turned on Respondent’s credibility in that it is in the same industry. Its defense depended on showing that its purpose was not to trespass on its competitor’s market. Resellers of common phrase-domain names which I take “easy flowers” to be would have to frame their explanations differently:
Whether the Respondent is commonly known as “Ready Flowers Limited” is irrelevant. Whether the “easyflowers” brand is “commonly known” is the relevant issue. [That “easyflowers” is a brand by which Respondent is known] is a conclusory assertion unsupported by any evidence of any kind. Given the relevant background (above) and the lack of candour in the correspondence that took place (see above), and the Respondent’s absolute silence on all of the matters raised by the Complainant, the Panel attaches no weight to such an unsupported statement and does not accept it.” (emphasis added).
Why write about mundane, quotidian decisions? The answer is they are artifacts in the cultures of cybersquatting and overreaching of rights, thus valuable specimens in providing markers of good and bad faith registration. Respondents lose because there is no genuine issue of material fact to rebut abusive registration, and in the best reasoned of these decisions Panels explain the proof, and in closer cases why the evidence favors the prevailing party. Commentators generally focus (too narrowly) on respondents’ wins and losses. <Fertiplus.com> makes more of a splash than <lyft.taxi> (“Here, Complainant argues Respondent relied on the LYFT mark when registering the disputed domain name, adding a gTLD that explicitly reflects Complainant’s industry. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”)
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, 2015). Available on Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. A Second Edition of the treatise is scheduled for publication December 2018. If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting email@example.com or firstname.lastname@example.org. The discount will not be available from Amazon and Barnes & Noble.