Panels appointed to adjudicate domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have written in the region of 50,000 decisions involving over 75,000 domain names (minuscule of course when measured against the number of registered domain names). What may surprise some parties, their representatives, and counsel is that these publicly accessible decisions have fueled the emergence and development of a jurisprudence of domain names.
On many issues and factual circumstances, those for which Panels have reached consensus on the law are regarded as authority. What should not be surprising (but to some it clearly is) is that the jurisprudence is comprehensive and complex. This has fueled the rise of a domain name bar of counsel with deep knowledge of its minutiae. Parties and counsel are expected to know the law, and when they do not they are chastised. Panels look for proof of parties’ contentions; if the party with the burden lacks proof it loses.
Two representative cases are The Procter & Gamble Company v. Marchex Sales, Inc, D2012-2179 (WIPO February 22, 2013) (<swash.com>. “Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature” (emphasis added); and Patricks Universal Export Pty Ltd. v. David Greenblatt, D2016-0653 (WIPO June 21, 2016 (<patricks.com>) in which the Panel stated that “Professional representatives of parties in UDRP proceedings are expected to be aware of or at least familiarize themselves with the Policy and Policy precedent, and to abide by the Policy and Rules.”
In a recent blog post on Domain Name Wire, Andrew Allemann reflected on the advantage of hiring a specialist lawyer for domain name disputes. The immediate stimulus for this suggestion was Geo Global Partners, LLC v. Ruby Administrator / Ruby Advertising, FA1807001797850 (Forum August 29, 2018) (<gardenique.com>), although he also reported on Pilot Fitness, LLC v. Max Wettstein / Max Wettstein Fitness, FA1808001799942 (Forum August 30, 2018) (<pilotfitness.net). Both complaints were denied; neither Complainant exhibited the expected familiarity with the Policy and Policy precedent.
Mr. Allemann suggested that the result in Geo Global could possibly have been different if Complainant had counsel knowledgeable about the evidentiary demands of the UDRP. The failure (and here I quote Mr. Allemann because he deserves credit in noticing what counsel appears to have overlooked):
The case mostly hinged on dates. The domain was registered in 1996. Geo Global Partners’ attorney tried to argue common law rights but did not make arguments sufficient enough to qualify in a UDRP case. Furthermore, even the common law rights claimed were after 1996.
Here’s the thing [though]: based on historical Whois records at DomainTools, it appears the current owner of the domain acquired it in late 2016 or early 2017. That changes things.
It certainly does change things! If the facts are what Mr. Allemann’s research discovered Complainant lost an opportunity, but being a cautious observer and not wanting to be categorical he also notes, “Perhaps the Complainant still would have lost for other reasons.” Whether that is true cannot be tested in a new UDRP proceeding because parties get only one shot to make their case.
The Geo Global Complainant was fortunate in not being sanctioned for reverse domain name hijacking, unlike Complainant in Pilot Fitness who was. Complainant in Pilot Fitness was represented by counsel, likely not a “specialist” because in the Panel’s view the complaint should never have been brought since the domain name registration predated Complainant’s use of the trademark in commerce. Mr. Allemann again
There’s a lot of nuance to UDRP, and if you hire someone who’s not an expert in cybersquatting, your results will vary. You’ll also likely pay that person to research stuff that other lawyers already know.
What Geo Global and Pilot Fitness have in common, and several others under review, is a failure to understand the unusual nature of the UDRP. While a judicial complaint is intended solely to give a defendant notice of the asserted claim and the requested relief, a UDRP complaint is intended to combine notice with probative proof of complainant’s contentions. In other words, a UDRP complaint is not simply a complaint but a complaint plus a motion for the equivalent of summary judgment.
Parties cannot prevail on motions for summary judgment unless they submit evidence establishing that there are no genuine issues of material fact or dispute. If there is uncertainty, or in UDRP terms, there is insufficient proof, the complaint must be dismissed. The point that needs emphasizing is that it is not good enough to allege contentions if parties or their representatives are unable to provide sufficient evidence to back them up, as in Geo Global.
This evidentiary demand is not one-sided. Defendants (or respondents) also have a burden, which is to demonstrate they either have rights or legitimate interests or complainant has insufficient proof of bad faith (either of registration or use). I have in mind such cases as Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, D2017-0807 (WIPO July 6, 2017) (<bankwest.com>. Registered in 1995) and Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures, FA1710001753342 (Forum November 7, 2017) registered in 1994). Both had significant delays in commencing proceedings. In Commonwealth Bank Respondent could possibly have presented a better case; and in Irving Materials, Respondent did not appear (in an ACPA challenge it alleges it did not receive notice and its registration was lawful).
The question is, what must a party do? In Pilot Fitness Respondent alleged and proved that it had priority of right. Except under a limited number of circumstances, trademarks acquired after the registration of corresponding domain names have no actionable claim and are sanctionable as reverse domain name hijackers.
What if a respondent who lacks priority fails to create a record of any right? Silence (either by failing to appear or failing to marshal evidence if it does) will most likely be conclusive against respondent. Several cases can be cited in which non-appearing or appearing but offering insufficient proof has resulted in respondents losing their domain names. Two Playboy cases were filed in August, D2018-1455 (<playboycenterfolds.com>, terminated) and Playboy Enterprises International, Inc. v. Alano Fernandez, E-Magine, D2018-1457 (WIPO August 21,2018) (<centerfolds.com>, default and transferred).
Combining “Playboy” with “centerfolds” is obviously infringing and Respondent (recognizing it had no chance of success and probably having an incentive not to be labeled a cybersquatter) settled the claim, but is “centerfolds” standing alone obviously infringing? Could an argument not have been made? The oldest extant registrations for CENTERFOLD alone date from November 1996, but the defaulting Respondent registered the domain name on April 25, 1995 (24 years ago!). The Panel must evidently have been persuaded that Complainant invented the term “centerfolds” or by 1995 it was already so well-known or famous as an unregistered mark and awarded it the domain name. However, since the domain name had never resolved to a website there was no direct evidence bad faith use. So, how does a Panel get from passive holding to registration and use in bad faith?
This is a puzzling problem. While it makes sense to infer bad faith registration from bad faith use it doesn’t work in reverse. If there is no proof of bad faith use the complaint has to be denied. The problem was solved by the Panel in the third decided UDRP case, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel explained that passive holding can be regarded as “use” when “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate.”
But, whereas TELSTRA is a well-known mark, can it truly be said that CENTERFOLD was in the same category in 1995? True, it undoubtedly had its prelapsarian aficionados but was it really “not possible to conceive of any plausible actual or completed active use”? However, the Respondent did not appear, there was no explanation for the registration, and silence spoke powerfully in Complainant’s favor. The Panel in Playboy observed that
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In based its inference on finding that it was “highly unlikely” that
Respondent was not aware of the Complainant’s (or its predecessor in title’s) adoption and use of “Centerfold” when he or it registered the disputed domain name in 1994 (assuming the Respondent was the original registrant of the disputed domain name). By that stage, the Complainant had been using and promoting the term for almost 20 years all round the world [although not as a trademark]. The Respondent has not denied the Complainant’s allegations in that respect [because it defaulted in appearance].
The same can be said about “Centerfolds” here that Mr. Allermann’s stated about the Geo Global decision: “Perhaps the [Respondent had it appeared] still would have lost for other reasons.”
Panels draw their conclusions from the record and if the only record is that which is marshaled by complainant and respondent is silent complainant will prevail. Since it is incumbent on respondents to explain their acquisitions for domain names that incorporate well-known marks, when they do not or cannot, they will lose. However, when there is explanation, as there was in Aurelon B.V. v. AbdulBasit Makrani, D2017-1679 (WIPO October 30, 2017) (<printfactory.com>) respondents will most likely prevail:
The Complainant may have erroneously believed that the use of the Disputed Domain Name for a PPC website was an unconditionally strong argument in support of bad faith together with the fact that the Respondent acts as a domainer [but that is not the law].
In Mister Auto SAS v. Wharton Lyon & Lyon, D2018-1330 (WIPO August 3, 2018) (<mister auto.com>) the Panel held that the Complainant commenced the UDRP proceeding “out of desperation as its prior attempt to contact the Respondent went unanswered (and the webpage did not resolve — revealing no clues as to the Respondent’s possible motives) but without a reasonable chance of success and as such in the circumstances constitutes an abuse of the Administrative Proceeding.” Although Respondent defaulted, the record included the Whois information (a required Annex) that Complainant’s right postdated the registration of the domain name.
Finally, Panels assess facts for credibility and probative proof of rights by applying a palette of factors. Priority is a principal factor; others include passive holding (Aurelon), content of the website (however weak a mark, if links are to websites offering competing goods or services, complainant prevails), locations of the parties, relationship of the parties (whether they are strangers or connected through contract (The Engineering and Development Group Limited v. Domain Privacy Service FBO Registrant, Domain Privacy Service FBO Registrant / Tamara Masri, D2018-1438 (WIPO August 28, 2018) (<edgogroup.com>) apparently a family squabble, outside the scope of the UDRP), complainant’s reputation (Mister Auto), and length of time complainants have waited to commence proceedings (Playboy Enterprises, BankWest, and Irving Materials), As I mentioned in an earlier essay, laches is not generally recognized as a defense although there could be adverse consequences particularly with weak marks unable to prove reputation when the domain name was registered.
Anyone who thinks that asserting and defending disputes in an administrative proceeding is less demanding than litigating in federal court should be on notice. Disputants who do not know or understand the evidentiary requirements or the demands of the UDRP are at a disadvantage as illustrated by Mr. Allemann’s observations.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP