For many years now, Uniform Domain-Name Dispute-Resolution Policy (UDRP) Panelists have accepted common law rights as a basis for standing to bring a UDRP complaint. However, for claims based on common law rights, there are additional requirements complainants must bring to the table.* A recent UDRP decision reminds us of the difficulty of proving bad faith intent at the moment of registration, especially when a trademark is not globally famous.
In the matter of Gray Television Group, Inc. v. Radio plus, spol.s r.o., WIPO Case No. D2016-1506, the sole Panelist came to the conclusion that, while the complainant had shown sufficient evidence in its common law trademark WDBJ (the call sign of its TV station) and later obtained a trademark registration for WDBJ7 in the United States, the Complainant did not show sufficiently that the Respondent had reason to know of Complainant and its rights at the time of registration. The Respondent, who is located in the Czech Republic, was using the domain name in conjunction with “a website displaying an error code and a pop-up which directed users to call a number for assistance and warned of suspicious activity.” The Panelist also seemed impressed by the argument that four-letter domain names are somehow more valuable, meaning it was possible that the Respondent had registered the domain name for the inherent value of the domain name, rather than any value it may have by virtue of corresponding to Complainant’s TV station call sign.
What are the takeaways for brand owners from a decision like this? One in which the domain name matches a brand exactly, is used for something that looks really suspicious, and there has been actual consumer confusion alleged? Here are a few thoughts:
- Make the argument that while the TV channel may be focused on a specific market (in this case Roanoke, Virginia) its content is accessible online around the world—including in the Czech Republic—through a simple Google search of “WDBJ.”
- Dig deeper into the Historic WHOIS data. How long has this particular registrant been the registrant?
- Conduct a reverse registrant search to see what other domain names the Respondent may have in its portfolio. Seemingly innocent stories may unravel if the Respondent is holding several domain names containing the marks of others.
Unfortunately, the ICANN’s transparency requirements do not apply to UDRP providers, therefore we do not have access to the entire case record for this one. It is possible that all of these steps were taken and the discussion of them simply did not end up in the final decision text. Even so, these remain helpful tips for practioners who are dealing with geographic disparity between the parties to a UDRP complaint.