By Steven M. Levy, Esq.
After more than two decades, over one hundred thousand published decisions, and the numerous secondary sources that are available to guide parties, there are now many resources available to prevent the filing of deficient UDRP pleadings. Plus, brand owners only get one bite at using this expedited dispute resolution procedure since, absent exceptional circumstances and new evidence that was not available at the time of the original Complaint, refiling is typically not permitted.
It’s critical not to underestimate the UDRP by treating it as a check-the-box process. Although not as complex as court-based litigation, there are many nuanced issues and procedures that are often involved. And losing a case can have serious consequences for Representatives and their clients. Money is wasted on filing and legal fees and the reputation of the client’s and representative’s names can be tarnished since UDRP decisions are made public.
Of course, the UDRP is not like courtroom litigation and, other than denying a case, the only way that a Panel can sanction a party is by ordering a transfer of the domain name or, in the case of an overly aggressive Complainant, by finding reverse domain name hijacking (“RDNH”). This is set out in UDRP Rule 15(d) and can occur when a Complainant, or its Representative (perhaps an attorney), should have known that it could not succeed on one or more elements of the UDRP but filed the complaint anyway. In other words, by filing an unwinnable complaint the Policy is being abused in bad faith. The Respondent is also often prejudiced as a result if it has to incur legal fees to defend itself.
Sometimes this happens when a complainant ignores the evidence or is just not sufficiently familiar with the UDRP or how it’s been interpreted in past decisions. It can also happen when a very weak case is filed primarily to harass the domain name owner in an attempt at pressuring them to settle the dispute.
Remember that the Rules require both Complainants and Respondents to sign a certification that the pleading is “complete and accurate” and that it is “not being presented for any improper purpose, such as to harass…”
While unrepresented parties who file pleadings themselves and without legal counsel may get some leeway from Panels, professional representatives, such as lawyers, are expected to understand the ins and outs of the Policy, its precedents, and its procedures, and present carefully constructed and well-supported pleadings.
In the hopes that the reader can avoid some of the many mistakes made by past participants, the following are a few common scenarios in which UDRP parties typically get tripped up:
1. Do your trademark rights predate the disputed domain name?
– Paragraph 4(a)(iii) of the UDRP requires that a Complainant prove bad faith registration and use.
– It is typically impossible to meet this conjunctive requirement if the Respondent registered or acquired the disputed domain name before the Complainant’s trademark rights came into effect. After all, how can a domain name have been registered to target a trademark that doesn’t yet exist?
– The rare exception to this may occur where the Complainant can prove that the Respondent knew of and anticipated the Complainant’s trademark rights (e.g., it learned of an upcoming product launch and registered the disputed domain name to target the mark in the hopes of selling it to the Complainant).
– If the domain name is currently being used in bad faith but it predates the trademark, the UDRP is likely not the right vehicle for enforcement and the trademark owner should consider another venue such as litigation in an appropriate court.
2. Is the complaint filed primarily to pressure the respondent into selling the domain name? (“Plan B” Case):
– A “Plan B” situation typically begins when a brand owner tries to purchase a domain name from the owner (Plan A) but the asking price is just too high.
– The tactic of filing a claim with a low chance for success as a means of pressuring the domain name owner, which may sometimes succeed in courtroom litigation, typically doesn’t work in the UDRP context because the Respondent is not required to retain counsel and there is no automatic win for a Complainant if the Respondent defaults – in other words, Panels are tasked with considering the merits of a case regardless of a default – and RDNH has frequently been applied as a penalty in abusive cases even where the Respondent never appeared or requested it.
– Finally, this strategy can often backfire terribly in purchase negotiations. If the brand owner found the asking price to be too high before it fired off a defective or weak complaint, the asking price is usually going to be much higher after a domain owner feels empowered by successfully defending a UDRP case.
3. Is your trademark well-known? Prove it.
– Panelists often see cases where the Complainant claims that its trademark is well-known and that the Respondent must have known of the mark when it registered the disputed domain name. However, in many instances, the only submitted evidence is a trademark registration certificate and perhaps a screenshot of the brand owner’s own website.
– While these items may support the existence of trademark rights, they really do little to prove the scope or reputation of the brand.
– In order to prove that the trademark is well-known or famous, the best practice is to submit evidence that shows how the brand has been marketed and promoted, and how it has been received by customers, the relevant industry, and by the public in general.
– If available, items that can show this include the following (preferably at least some of them dated prior to the registration date of the disputed domain name):
- Selected pages of Complainant’s website showing its main products or services and how they are promoted
- Examples of advertising for branded products/services
- Images of Complainant’s shops, offices, or other facilities in various countries
- Images of Complainant’s trade show booths
- Images of Complainant’s branded event sponsorships
- Copy of a Wikipedia page about the brand
- Screenshots of some of Complainant’s social media pages
- News articles mentioning the trademark, preferably from prominent media outlets but items from smaller specialized or trade publications may suffice. Blog posts mentioning the brand, by customers, can also be helpful.
- A Forbes listing or other awards, accolades, or recognition received by Complainant
- A screenshot of Complainant’s community service page showing that it’s trying to be a good corporate citizen
4. Who owns the trademark and have you named the right complainant?
– It is necessary to prove ownership of trademark rights by the named Complainant. Otherwise, the case can be dismissed based on a lack of trademark rights by the named complainant under Par. 4(a)(i) of the UDRP.
– If the mark was acquired from a predecessor, or if there’s been a change of company name, it’s critical to supply related evidence so that the panel knows who currently owns the mark. Old trademark registration certificates may not always show the current owner of the mark and so this discrepancy should be explained and supported with evidence of an assignment, merger, etc.
– It’s also OK to list multiple Complainants if all have some claim to the asserted mark (e.g., parent and subsidiary companies).
– Other areas that cause problems are where the trademark rights are in dispute or where the Respondent may have its own trademark rights that relate to the disputed domain name. If this type of situation exists, consider whether the present dispute is beyond the very limited scope of the UDRP and may be better resolved by an appropriate court.
5. Is a domain name confusingly similar to the trademark?
– Par. 4(a)(i) of the UDRP is considered a threshold test. The Complainant must prove that it owns trademark rights and that the disputed domain name is “confusingly similar” to that mark. Trademark ownership can be proven through either registration with a government trademark office or through customer reputation gained from advertising and sales (also called common law rights).
– Confusing similarity is a straightforward “sight, sound, and meaning” inquiry and small differences between the complainant’s mark and the domain name usually don’t avoid confusion. If the mark, or a very close variation of it, is recognizable in the domain name, then this element of the policy will almost always be satisfied. It’s important to remember that the content of the Respondent’s website is often disregarded when assessing confusing similarity under this part of the UDRP inquiry so the fact that the web content is targeting the trademark may not be considered at this point in the UDRP inquiry (though it can be highly relevant under Pars. 4(a)(ii) and (iii)).
– The confusing similarity standard is different from the more complex “likelihood of confusion” test for trademark infringement as applied by many courts. While some of those elements may come into play in the UDRP, such as proximity of the goods or services, geographic scope of use, customer sophistication, etc., especially when considering whether the Respondent registered and used the domain name in bad faith, they are not part of the inquiry for this first UDRP element.
– If the Complainant can’t prove that it owns rights to the claimed trademark, or if some recognizable variation of the mark doesn’t appear in the disputed domain name, there’s a good chance that the case will be denied regardless of whether the Respondent’s actions violate the other two elements of Par. 4(a).
6. Missing Or Misrepresented Evidence
– This is a common and frustrating problem that Panels encounter in UDRP cases.
– It’s most often the result of inexperience with the UDRP or an incorrect assumption that the UDRP arbitration framework is very informal in nature.
– Some of the frequent situations Panels encounter are:
- No trademark registration is submitted and there’s also a failure to provide sufficient evidence of common-law rights.
- Mere lists of trademark registrations and references to registration numbers are not evidence of trademark rights. Submitting a small number of trademark registration certificates or screenshots from trademark registration office websites showing the particulars of a registration are usually quite sufficient.
- Screenshots of Respondent’s website or other complained-of activity are not provided.
- Unsupported factual claims – most often asserting the fame or reputation of Complainant’s mark without supporting evidence. See item 2 above.
- Unfavorable evidence is intentionally omitted (parties really get into trouble if the panel thinks they’re hiding something)
- Mischaracterizing or exaggerating a respondent’s activities, for example, claiming that a website is a competitive infringement when, in reality, it’s a fair use such as a fan or criticism site.
7. The “Commonly Known By” Defense
– UDRP Par. 4(c)(ii) embodies the idea that it’s a fair use of a domain name if the owner, or its business, is commonly known by the domain name, even if no trademark rights have been acquired.
– It is well established that the very same trademark can be used by multiple businesses in different industries so long as there’s no likelihood of confusion. This is the case with the trademark DELTA for airlines, faucets, and power tools, as well as DOVE for soap and ice cream.
– There have also been cases where a Respondent claimed that the disputed domain name represented a personal nickname by which they are regularly known to their friends and family. But this must go farther than a mere assertion in the response and be supported by the submission of real evidence.
– Typical evidence submitted by Respondents includes screenshots of a website or social media account promoting their otherwise legitimate business, a corporate registration certificate, and in very rare cases, their own trademark registration (or pending application) that have not been disclosed or adequately considered by Complainant or its counsel.
8. Legitimate Or Fair Use
– Par. 4(c)(iii) of the UDRP provides a defense where the disputed domain name is being used for a legitimate noncommercial or fair use.
– This can include a fan or criticism site, or perhaps a sincere comparative advertising page where there is no likelihood of confusion as to whether the content is approved of by the trademark owner.
– Carefully consider whether the disputed domain name is being used for a site of this type. The lack of advertisements, monetized links, or other obvious commercial activity at the site may not, alone, indicate that it is “fair” or “noncommercial” if the site is otherwise targeting the Complainant’s trademark in a way that could monetarily benefit the Respondent or others who receive forwarded traffic from the site.
– Similarly, the appearance of a few monetized ads or links at an otherwise legitimate blog, political free speech, fan, or criticism site can sometimes be defensible if they’re only generating just enough revenue to support the Respondent’s hosting and other costs of operating the site.
– If a website appears to be a sincere fair use, Complainants should proceed with caution and avoid unsupported claims that Respondent has no legitimate interest in the domain name or that the name is being used in bad faith.
9. Failure To Mention One Of The Elements Of UDRP Sec. 4(a)
– This may seem obvious, but it’s often a problem with parties who represent themselves and sometimes even lawyers get into trouble because of it.
– This often involves a failure to mention a claim or defense under Par. 4(a)(ii) (rights or legitimate interest) but sometimes Par. 4(a)(iii) (bad faith). The UDRP provides some examples of how each of these elements may be addressed in Pars. 4(c) and 4(b) respectively. While these examples are not the only ones that will be considered by a UDRP Panel, they should be carefully reviewed by both parties as they can critically affect the outcome of the case.
– Don’t expect the Panel to immediately understand or figure out your argument for themselves. Explain your positions clearly and thoroughly and support your claims with submitted evidence.
– Drafting and clerical failures may not always be excused so proofread your documents before submitting them. A very common mistake is mentioning the wrong domain name or trademark when using pleadings from a prior case as a template and failing to carefully update the document for the current case.
– Panels are entitled to draw reasonable conclusions based on the absence of an argument so if you don’t assert something or provide supporting evidence, there may be an assumption that you intentionally omitted it because it’s a weak position for your case.
10. Are There Other Legal Actions?
– UDRP Rule 3 (b)(xi) says that a complainant must identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain names that are the subject of the UDRP case.
– As a narrowly focused arbitration procedure, UDRP cases typically take a back seat to court or administrative litigation between the parties but only when that litigation directly affects the merits of the UDRP case. The UDRP may still proceed if the litigation is tangential to, or unrelated to the Complainant’s trademark rights or the disputed domain name.
– For example, the UDRP case likely won’t be dismissed or suspended in favor of disputes involving:
- trademark licenses
- trademark infringement
- business ownership
- employment
- debts or finances
- contractual obligations or interpretation
– If there’s already been a prior UDRP case involving the same domain name, a second case may violate the Rules. Subsequent UDRP complaints are only allowed in very limited circumstances such as where there is new evidence that was not available at the time of the prior case, or the prior case was dismissed “without prejudice” to the filing of a subsequent complaint.
11. Unexpected Replies. Things You Learn For The First Time When You Receive A Domain Name Owner’s Response To Your Complaint.
– Because the UDRP is a narrowly focused arbitration process, there is no advanced discovery such as document production, live witness testimony, or cross examination. A Complainant simply may not know what it’s going to learn for the first time in a Response.
– Respondent may submit evidence of:
- its own corporate registration
- a trademark registration
- legitimate use of the domain name for emails
- the fact that it’s a family surname or a legitimate nickname
– The best approach is to remain open and flexible. If a plausible defense is raised, and supported by evidence, consider reaching out to the Respondent to suspend the case for up to 45 days while settlement is discussed (or evidence is verified).
While the above is not an exhaustive list of common flaws seen in complaints and responses, hopefully the reader is provided with sufficient information to avoid the most common obstacles to succeeding in a UDRP case. Getting tripped up by one of these issues can lead to lost fees, wasted time, and public embarrassment. The better approach is always to take a few extra minutes and carefully assess the foundation of your case and the sufficiency of your pleadings and evidence.
Questions?
Contact Steven M. Levy, Esq. at slevy [AT] accentlawgroup [.] com to get more information on domain name disputes
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