When faced with an uncooperative cybersquatter, trademark owners have several choices, among which are filing a lawsuit or a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint.[1] One of the advantages of a UDRP procedure is that it is quicker and much less expensive than a lawsuit. But that does not mean it should be taken lightly. It is still necessary to make sure the complaint has the facts straight, includes all relevant arguments, and has supporting evidence attached. We’ve seen recently that not following these important rules can derail a potentially winning complaint.
Just the facts. It is tempting to recycle a previous complaint when drafting a new one. But it is vital that the new complaint fits the facts at hand, including the marks at issue and the use being made of the domain name. Winning arguments for a different situation may not apply in the current case. In addition, UDRP panels may be annoyed at perceived carelessness. For example, in one case, the panel said, “Having carefully reviewed Complainant’s initial submission, the Panel believes that it was prepared by some sort of automatic process with little or no human review.” … “[T]he Panel is quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.”[2]
State your case. UDRP complaints must be “front-loaded” because often it is the only pleading the panel will see. This means the complaint must include all reasonable arguments and must anticipate and rebut reasonable arguments the respondent (registrant) might make (or that the panel might consider on the respondent’s behalf).
A recent case involved the ESPN mark, which the complainant claimed (with justification) is famous.[3] At least one of the contested domain names was used for a web site offering competing content. Complainant did not argue that respondent was likely aware of the famous mark when registering the domain names, and that respondent’s intent was likely to divert traffic to competing web sites. Instead, the complainant apparently relied solely on constructive notice of the mark based on complainant’s U.S. registrations.[4] While this concept has occasionally been accepted (usually in connection with other evidence of bad faith), it is generally disfavored by UDRP panels,[5] including this one. The complaint was denied.
The owner of the GIRLS GONE WILD mark barely[6] managed to prove the second element of its complaint against girlsgonewild.name (that respondent has no rights or legitimate interests in the domain name), although the panel noted:
normally a Complainant is able to and is expected to adduce more evidence than Complainant has on this occasion to make out the prima facie case required. For instance, Complainant contends that Respondent makes an illegitimate, commercial use of the <girlsgonewild.name> domain name, but does not provide any evidence of what the … domain name resolves to and has not provided any further explanation as to how Respondent’s use is illegitimate or commercial.[7]
Complainant’s luck ran out when it came to the third element (registration and use in bad faith). The panel found that Complainant’s bare assertion that “Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s affiliation with the disputed domain name,”[8] without further explanation or any proof, was not sufficient to prove its case.[9]
In a more nuanced case, complainant was EFG Bank European Financial Group SA. The complainant relied on registrations for marks containing EFG in a complaint against the domain name eurfgl.com.[10] The respondent was allegedly using a subdomain, bank.eurfgl.com, for a phishing site that copied the official web site of one of complainant’s subsidiaries. After finding that the domain name was not confusingly similar to any of complainant’s EFG marks, the panel noted, “It is apparent that the disputed domain name incorporates an abbreviated version of the Complainant’s name (“eurfgl”, which may perhaps be an acronym for “European Financial Group Luxembourg”). But the Complainant provided no evidence of having trademark rights in EURFGL.” Trade names in and of themselves are not sufficient to support a UDRP complaint.[11] Attorneys for the complainant may well have felt that they could not make a good-faith argument that the complainant had rights in the acronym EURFGL. However, it seems worthwhile to argue that the complainant had unregistered rights in the mark or that consumers would associate the acronym with complainant’s services. Although the panel said the complainant’s evidence suggested that the respondent had no rights in the domain name and that the registration was in bad faith, he did not reach those issues because he found that the domain name was not confusingly similar to any mark in which the complainant claimed rights. The panel added in a footnote that he had “considered issuing a Panel Order [requesting additional evidence] in this case, but decided against it. The Complainant is professionally represented, is a large corporate entity, and has had as much time as it has wanted to prepare its Complaint. The Complainant has filed evidence of a large number of marks, and none of them correspond to the relevant acronym. If the Complainant had any such rights, it has had ample opportunity to provide them.”
Finally, this decision speaks for itself:
[UDRP] ¶4(b)(iv) provides bad faith can be found if by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location. Complainant has not alleged sufficient facts to make a finding under this provision. While Complainant has claimed traffic was diverted, it did not argue Respondent did it for commercial gain. Complainant did not argue its business was disrupted nor that Respondent received click through revenue from the links on Respondent’s web site (which is what complainants usually do).[12]
Where’s Your Evidence? A fatal flaw we see surprisingly often is the failure to attach sufficient evidence to back up complainant’s claims. While evidentiary standards may be a bit looser for a UDRP than in a court of law, complainants cannot assume that the panelists (many of whom are retired judges) will simply take them at their word. It is particularly important to attach evidence of how every domain name in the complaint is being used. Sometimes complaints covering multiple domain names apparently will only include web site screenshots showing how a sample of the domain names are being used. In those cases, the panel may simply deny the complaint with respect to the other domain names.[13]
It is also important to include proof of complainant’s rights in the relevant trademark, particularly when the trademark is unregistered. Failure to do so can stop a complaint before it gets started.[14] Panels want to see evidence that the complainant had rights in the mark before the domain name was registered.[15] For example, in the GIRLS GONE WILD case discussed above, the complainant apparently attached a U.S. registration that was filed in 2007, after the domain name’s registration in 2006, leading the panel to conclude that the respondent could not have registered the mark in bad faith. The panel perhaps should have noted that the claimed date of first use was 1998, well before the domain name registration. That particular registration was likely selected because it covered the same services as the respondent’s. But the complainant might have avoided that issue if it had also attached one of its earlier registrations, such as one that was filed in 1999 for related goods, or offered other evidence that the respondent was aware of the mark when registering the domain name.[16]
Sequel Can Help. With more than a decade of experience and hundreds of successful UDRP complaints under her belt, managing partner Melise Blakeslee and the team at Sequel can help you avoid these pitfalls and put your best foot forward when enforcing your marks against cybersquatters. Contact us today to find out who is infringing your mark on the Internet and what Sequel can do to help.
The Complainant has not put forward any other basis for its allegation that the Respondent has registered and used the disputed domain names in bad faith. The Complainant has also not presented evidence in this case which demonstrates that the Respondent had registered or acquired the disputed domain names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration[s] 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 documented out-of-pocket costs directly related to the domain name[s]”, nor which indicate any of the other circumstances set out in paragraph 4(b) of the Policy. The Panel is unable to make a finding, having regard in particular to the words which have been underscored, that the circumstances fall within paragraph 4(b)(i) of the Policy. ESPN, supra (emphasis in the original).