Des Ryan is a former partner in Davies Collison Cave, now a Consultant. He is a member of the World Intellectual Property Organization (WIPO) Panel of Neutrals appointed to decide Complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), and has decided over seventy cases under the Policy. In this article Des discusses, by reference to recent cases, some of the reasons why Complaints fail. He stresses the importance of ensuring that each party supports its case with evidence that addresses relevant facts at the relevant time.
Ten years of operation of the Uniform Domain Name Dispute Resolution Policy (UDRP) was celebrated at a conference at the headquarters of the World Intellectual Property Organization (WIPO) in Geneva last month. In opening that conference, the Director-General of WIPO, Australian, Francis Gurry said, “I think that what we can say after 10 years of the UDRP is that it has been a very successful experiment“. He attributed that success to two principal elements. First, that it presented a solution to a real and pressing need, and secondly, it provided a predictable system yielding quality results. It has been described by one U.S. Federal Court Judge as:
“an administrative alternative dispute resolution policy which creates a procedure specifically designed to provide a fast and cheap means for resolving domain name disputes. On average it takes no more than two months to resolve a domain name dispute under the UDRP“.
A potent measure of the success of the UDRP is the number of cases which have been conducted under the Policy. Since its commencement of operation in December 1999, over 25,000 cases have been filed and more than 18,000 decided. Of the cases decided, over 80% have been in favour of the Complainant resulting in transfer or cancellation of the domain name. That is a very high success rate but it should be remembered that the Policy is intended only to deal with cases of “cybersquatting“ where the registration and use of the domain name deliberately seeks, without justification, to appropriate the reputation of another's trade mark. It does not seek to resolve issues between parties legitimately claiming conflicting interests in the domain name. In Pipe Restoration Technologies, LLC v. Cameron Manners, WIPO Case No. D2009-0812, the Panel noted:
“The Policy was introduced to deal with cybersquatting. It is not appropriate for resolving complex disputes between competitors where there has been a history and where the facts are not clear and the Panel would have been minded to reject the Complaint on this ground alone“.
The proceedings are administrative in nature not judicial and their authority derives from contracts between the Internet Corporations for Assigned Names and Numbers (ICANN) and their appointed domain name registrars on the one hand, and between the registrars and the domain name holder on the other.
The UDRP is applicable to all generic top level domain names (gTLDs) and to many country code domain names (ccTLDs), some time with adaptation such that for the .au domain, the auDRP.
To succeed in a Complaint under the UDRP, the Complainant has to establish three things:
(i) that the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name was registered and is being used in bad faith.
All these grounds must be satisfied. Failure to satisfy one of them will result in rejection of the Complaint even if the other criteria are satisfied.
WHY DO SOME COMPLAINTS FAIL?
A survey of a few recently decided cases gives an indication of particular reasons why a Complainant has failed to show, to the reasonable satisfaction of the Panel, that it has a case, or the Respondent has successfully rebutted it.
1. Confusingly Similar Trade Marks
It has first to be remembered that the Complaint must be based on a trade mark right and not some other of right such as a personal or geographic name. The UDRP, unlike the auDRP, does not extend to rights in personal or place names as such, though Panelists have recognised that in many instances, particularly in the case of entertainers, the personal name is used as a trade mark. See for example Julia Roberts v. Russell Boyd, WIPO Case No. D2000-0210, where the Complaint was upheld on the basis that Julia Roberts' name was her trade mark. On the other hand, Israel Harold Asper, a prominent Canadian businessman, was unsuccessful because although his name was well-known, it was not used by him as a trade mark. Similarly, Brisbane City Council was unsuccessful when seeking transfer of the domain name <brisbane.com> from Joyce Ress Advertising Pty Ltd. The Port of Helsinki was similarly unsuccessful on the ground that the port authorities had not used the name as a trade mark, but in the case of the Port of Hamena, WIPO Case No. D2001-0001, the Panel found that distinctiveness, and therefore trade mark rights, had been established.
Where the domain name consists of terms which are essentially descriptive it will be difficult for a Complainant to establish trade mark rights unless it can be shown that the term had acquired a secondary meaning. In WIPO Case D2009-0957, <usclubsoccer.net>, the National Association of Competitive Soccer Clubs attempted unsuccessfully to rely upon a registration in the U.S. Supplemental Register of the term “US Club Soccer“. Its application for registration in the Principal Register having been rejected on the basis that the mark is a mere combination of a primarily geographically descriptive term and a generic or merely descriptive term for the type of services provided. The Panel found the Complainant had failed to establish that the expression had acquired a secondary meaning and that there was evidence of widespread use of the expression “clubsoccer“ in references to organisations, news reports, domain names and other listings. It concluded therefore that the words “Club Soccer“ were no more than a descriptive term and that the Complainant had failed to establish trade mark rights.
2. Rights or Legitimate Interests
In a number of cases where the Respondent (domain name holder) had registered domain names containing the names of celebrities or well-known trade marks, either as unofficial fan sites or criticism sites, Panels have found for the Complainant, particularly where the domain name has been monetized by collecting revenue on a “click through“ basis. Although the onus in proceedings under the UDRP is upon the Complainant, Panels have recognised that in relation to this requirement the relevant facts are often uniquely within possession of Respondent.
In WIPO Case No. D2009-0989, the Porsche Company was unsuccessful in a Complaint against the registration of <porscheexperience.com>. The Respondent, Simon Chen, asserted that the domain name had been registered for the purpose of promoting a book which he had written providing information about Porsche cars and entitled “The Ultimate Guide to the Porsche Brand“. The Panel was not satisfied on the evidence that this was anything other than a bona fide offering of goods and services by reference to the domain name. The Respondent was not using the domain name to sell any other goods and the website to which the domain name resolved indicated clearly that this was an unofficial website created by an enthusiast who claimed to have owned three Porsches and “would never drive anything else“.
The Respondent was also successful in establishing its right or legitimate interest in WIPO Case No. D2009-0897, where British Sky Broadcasting Limited failed in its Complaint with regard to the domain name <skytravel.com>. The Respondent used the domain name in relation to its travel agency business. It was able to show that the expression “sky travel“ has been used in reference to air travel since 1920 and is widely used in the travel industry in relation to such services. The Panel also accepted Respondent's evidence that the Respondent was not aware of Complainant's “Skytravel“ trade mark when it acquired the domain name.
3. Registered and Used in Bad Faith
Under this heading it is necessary for the Complainant to show that the domain name was both registered in bad faith and is being used in bad faith. This is contrasted with the situation under the auDRP where either criterion may be satisfied. Nevertheless, cases where the one criterion has been satisfied but not the other have been rare. Panelists have frequently found bad faith use as supporting an implication of bad faith registration. Similarly, in the landmark case of Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where bad faith registration was found, “passive holding“ of the domain name was held to satisfy the criterion of use in bad faith.
Although the second and third grounds are separate, they tend to merge and evidence establishing a lack of right or interest often tend also to establish bad faith. Equally where there is a finding of right or legitimate interest there is unlikely to be a finding bad faith. Furthermore, since, in order to succeed, the Complainant must succeed on all grounds, where the Panelist finds against the Complainant on one of the grounds, the other grounds need not be considered.
WIPO Case No. D2009-0883 concerned the domain name <nectarbeauty.net>. The domain name was created in December 2007 and notwithstanding that the Respondent did not file a Response, the Complaint failed. The Complaint suffered from the, all too common, defect that Complainant's evidence addressed only the situation as it existed at the time of the Complaint and not at the time of the registration of the domain name. It was a case where the Complainant clearly failed to discharge the onus upon it of establishing each of the grounds upon which the Complaint needed to be based. As the Panel remarked:
“If it had been an easy matter for Complainants to provide evidence (if it exists) of friction between the parties in 2007 or other facts upon which the Panel might infer registration in bad faith. Even Complainant's allegations do not address any of these prior to 2009. There is, on the provided record, no basis or any inference of bad faith in 2007“.
WIPO Case No. D2009-1027 involved a dispute between two on-line games distributors over the domain name <armorgames.com>. In this case, apparently as a result of a remark made by one of the Respondent's directors at a meeting, both Complainant and Respondent rushed to a register trade marks consisting of, in the case of Complainant, a U.S. company, “Armor Games“, and in the case of the Respondent, a Canadian company, “Armour Games“. The Panel held on the evidence that at the date of registration of the domain name, the Respondent had a comparable right or legitimate interest to that of Complainant. The case was therefore one involving a legitimate dispute between the parties as to their respective rights and one which was not amenable to resolution under the Policy.
EVIDENCE IS KING
Although the great majority of decisions under the UDRP are given in favour of the Complainant, it must be borne in mind that the onus of establishing each of the grounds rests squarely on the Complainant, and unless those grounds are established by evidence to the satisfaction of the Panel the Complaint will fail, (even in cases where no Response is filed). Mere assertion will not suffice. Complainants must be careful to establish the relevant facts at the relevant date. Only in exceptional cases would a Complainant be able to show registration in bad faith by reference only to events taking place some time after the date of registration.