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Author The Opte Project
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I have been a member of the World Intellectual Property Organization's domain name dispute resolution panel since 2003 and I have seen a fair number of complaints in domain name disputes in that time. I have also settled a few of my own as counsel to trade mark proprietors or business owners who object to the registration of a domain name that is the same or similar to their trade mark or business name. The complaint is an important document as it is usually the only source of evidence and argument that a panellist can rely upon, yet it is rarely prepared well. More often and not I receive screeds of irrelevant matter, bad points, repetition of the same point and disjointed argument all presented in a tone of exaggerated indignation backed up by lengthy annexes all of which have to be read and most of which are next to useless. This short article is intended to be a guide for those contemplating a complaint under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP").
Is your Case suitable for the UDRP?
As I said in my Introduction to Domain Name Dispute Resolution 21 Nov 2015 not every domain name dispute is suitable for the UDRP or similar alternative dispute resolution scheme. The UDRP and similar schemes were intended to tackle cyber-squatting, a practice prevalent in the early days of the internet whereby speculators registered domain names similar to the trade marks or corporate names of well known businesses or institutions and ransomed them to the business owner for a substantial sum of money that was nevertheless lower than the costs of recovering the domain name by a trade mark infringement or passing off action in the civil courts. Such schemes were never intended to outlaw domaining, a practice whereby businesses register domain names that are not the same as or similar to trade marks or corporate names in the expectation that their value will appreciate or to disputes where more than one business has a legitimate interest in the domain name as in Prince Plc v Prince Sports Group Inc  FSR 21. The UDRP and similar schemes are suitable for clear cases where there is no real defence to a request for the transfer or cancellation of the disputed domain name.
The second point to consider is that the UDRP is only one of several ADR schemes. It is used for most generic top level and some country code top level domain disputes but by no means all. Claims for the transfer of domain names ending in ".uk", for example, should be made under Nominet's Dispute Resolution Service ("DRS") and claims for the transfer of domain names ending in "eu" should be addressed to the Czech Court of Arbitration's Arbitration Center for .EU Disputes. The World Intellectual Property Organization publishes very useful guidance to the sort of disputes that are suitable for the UDRP on its Domain Name Dispute Resolution Service for Generic Top-Level Domains page. Incidentally, if you are unsure what is meant by the terms "generic top level domain", "country code top level domain", the abbreviations "gTLD" and "ccTLD" or any other term of art then you should read my article of 21 Nov 2015.
If you have never filed a complaint under the UDRP before then you should read the following documents carefully:
- the UDRP itself;
- the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"); and
- the supplemental rules of your chosen dispute resolution service provider.
The right to apply for the transfer or cancellation of a disputed domain name derives from the following provision of the UDRP which is transposed into every agreement to register a domain name:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, thatNote the last line of the provision. The onus is on the complainant to prove his or her case and he or she must prove all the elements in sub-paragraphs (i) to (iii).
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; andIn the administrative proceeding, the complainant must prove that each of these three elements are present."
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The document in which you must prove your case is called the complaint and its form and content are prescribed by the UDRP and the Rules. Each service provider has its own form which can be completed on-line or downloaded from its website. For instance, you will find the WIPO on-line form here. Each form is accompanied by copious notes on how to complete it most of which are self-explanatory. The section that gives most difficulty is the factual and legal grounds upon which a complaint is made (Section VI of the WIPO form). This is where my article is intended to help.
The Domain Name is identical or confusingly similar to a Trade Mark or Service Mark in which the Complainant has Rights
All that is necessary for this element is something like this:
"The Complainant has registered the word ............ as a trade mark in [the United Kingdom] under registration number ...................... for [specified goods and services] in classes ................... which mark is identical to the disputed domain name if the suffix ".com" is disregarded. A copy of the particulars of registration that have been downloaded from the British Intellectual Property Office website is attached as annexe ...."More often than not panellists are confronted with vast tables and bundles of trade mark registrations from every corner of the globe most of which are very far removed from the domain name in suit. The panellist has to read all that verbiage and it is a complete waste of his or her time. Panellists are not salaried judges but busy intellectual property lawyers and patent and trade mark attorneys who are paid about US$1,000 (£659.59 at current rates of exchange) for each case however long it takes to decide. That is not a lot of money after all overheads and expenses are deducted. Nothing riles a panellist more than a complaint that wastes his or her time.
Sub-paragraph (i) above requires a complainant to prove only one trade mark or service mark in which he or she has rights. He or she can do that quite satisfactorily by referring to the registered trade mark in any jurisdiction that is closest to the disputed domain name. Proving that the complainant owns other trade marks in other jurisdictions adds absolutely nothing to the case. Complainants and their lawyers must resist the temptation to throw in the kitchen sink.
Sub-paragraph (i) does not require the trade mark to be registered. It is enough to be able to bring an action for passing off or some other cause of action. Of course the complainant has to prove all the ingredients of an action for passing off, that is to say reputation, misrepresentation and damage. As the complaint has to be made on paper and all the facts and matters on which the complainant relies has to be set out in the complaint some guidance may be derived from Mr Geoffrey Hobbs QC's judgment in Re Wild Child  RPC 455.
Another thing that exasperates panellists is unnecessary citation of authority. Whether a trade mark is the same or confusingly similar to a domain name is a matter of impression and previous cases where another domain name was held to be similar or indeed dissimilar to a trade mark are rarely of any assistance to the panel whatsoever. Nor are cases that decide obvious points such as the suffix "com" does not distinguish an otherwise identical domain name.
The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
It is impossible to prove a negative and complainants are not required to do so. On the other hand they do have a duty to assist the panel to reach a just decision which probably connotes an obligation to disclose any facts or matters that might disclose a right or legitimate interest in the domain name and then address it. The reason I say that is that the panel has power under rule 15 (e) of the Rules to declare that a complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Deliberate or even negligent non-disclosure would certainly constitute bad faith in my book.
Paragraph 4 (c) of the UDRP lists a number of circumstances which if found to be present may demonstrate that the respondent has rights or legitimate interests in the disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; orIt should be noted that these are examples and the list is not exhaustive.
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Probably the best way to deal with the second element is to say that the Complainant has never licensed or consented to the registration or use of the disputed domain name and to the best of its knowledge and belief none of the circumstances listed in paragraph 4 (c) of the UDRP applies and that there are no other circumstances that justify the respondent's registration or use of the disputed domain name.
The Domain Name has been registered and is being used in Bad Faith
This is the most difficult element because the complainant must prove both registration and use in bad faith. Happily paragraph 4 (b) of the UDRP provides the following assistance:
"Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:It should be noted that these circumstances are only evidence and not conclusive proof of registration and use in bad faith but if the complainant can prove that one of them applies it will be the only evidence available to the panel and he or she will be bound to accept it unless the respondent can rebut it or explain it away. It is nowadays rare to find an example of classic cyber-squatting that would fall within sub-paragraph (i). In most of the cases that come before me the respondent parks the disputed domain on a holding page with plenty of pay-by-click links and sponsored searches and that is usually enough to invoke sub-paragraph (iv) as the panel will already have found the domain name to be identical or confusingly similar and pay-by-click revenue is commercial gain.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances in paragraph 4 (b) are not exhaustive and that other circumstances of the same nature will suffice. Some panels have held that the mere act of registering a name that is similar to the complainant's trade mark or corporate name, failing to respond to a letter before claim or even using a privacy service suffice as evidence of registration and use in bad faith but I am more sceptical. To take an obvious example, Lloyds is the name of a large London clearing bank, a corporation of insurers and a well-known pharmacy chain in the UK and each of them is entitled to register a generic top level domain name that includes the word "Lloyds". There are very good reasons why domain name holders use privacy services and there can be all sorts of reasons why a respondent in country A might not even receive let alone take seriously a letter before claim from some law firm in country B. As a rule of thumb most cases that are suitable for the UDRP fall within one or more of the circumstances in paragraph 4 (b) and if a case does not fit it is probably not suitable for this summary procedure.
It should be remembered that the word "registration" in 4 (a) (iii) applies to renewals and transfers as well as original registrations so it is possible that a domain name which was originally registered in good faith may not be renewed in good faith because of changing circumstances.
Should anyone wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours or message me through my contact form.