In two recent cases decided under the Uniform Domain Name Dispute Resolution Policy (UDRP), the same Panel from the World Intellectual Property Organisation (WIPO), ordered transfer of the domain name <atlasshruggedmovies.com> and denied transfer of the domain name <atlasshruggedmovie.com>. Although based on different facts, the Panel highlighted in both decisions the fact that both complaints were on shaky ground given the absence of direct proof of the complainant's rights. Whilst this omission to produce suitable evidence did not impact on one of the complaints, it contributed to the denial of the other complaint. This highlights the importance of being familiar with all UDRP requirements and of complying thoroughly with them. As the Panel pointed out, "Complainants’ professional representatives in Policy proceedings are advised to familiarize themselves with the Policy’s procedural and substantive requirements, and to comply with them, particularly those that differ from their counterparts in civil litigation, before choosing to take advantage of the cost savings and expedited resolution that the UDRP process provides."
The complainant in both cases was Atlas Productions LLC of New Jersey, in the United States of America (the Complainant), a company claiming to have acquired exclusive rights to produce and distribute a motion picture adaptation of the novel Atlas Shrugged. The novel Atlas Shrugged was written by Ayn Rand and published for the first time in the United States of America in 1957. Atlas Shrugged is a famous political satire set in an environment of worsening economic conditions and touching on many philosophical issues such as individualism, economics, ethics and sex. It was eventually made into a movie, Atlas Shrugged: Part 1, which was released in the United States of America on 15 April 2011.
The respondent in the <atlasshruggedmovies.com> case, decided on 17 May 2011, was toptendiets.org of Utah, in the United States of America, who registered the domain name in July 2009 and used it to display a page containing various hyperlinks. The respondent in the <atlasshruggedmovie.com> case, decided on 18 May 2011, was a Phil McCarty of Gainesville, Florida, in the United States of America who was, amongst other things, a screen writer and director who had made a number of parody films spoofing well-known commercials or movies. Mr McCarty registered the domain name <atlasshruggedmovie.com> in 2004.
The Complainant filed two complaints with WIPO, respectively on 31 March 2011 and 21 March 2011, requesting transfer of the respective domain names. To be successful under the UDRP, a complainant must prove that:
- the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Richard G. Lyon, who was appointed as the Panel for both cases, ordered transfer of <atlasshruggedmovies.com> but denied transfer of <atlasshruggedmovie.com>.
Although the different outcomes can be explained by the specific underlying facts of each individual case such as differences in registration dates (2009 and 2004), registrant profiles and use made of the respective domain names, both complaints failed to live up to the standard of proof of the UDRP which was fatal for one of them.
To satisfy the first requirement of the UDRP, the Complainant asserted that it acquired rights (including trade mark rights) to ATLAS SHRUGGED, at least in relation to movies, by means of an assignment which took place in 1992. However, the Complainant failed to provide evidence to support its assertion that it acquired such rights even though, as the Panel noted, such evidence should have been available to the Complainant. The Panel added that the Complainant had shown that it had "expended considerable funds recently to promote its forthcoming movie, and on this basis might be said to have proven common law rights in the movie’s title" although this was not sufficient to dispel the Panel's doubts about the Complainant's entitlement to bring the respective proceedings.
As it is clear under the UDRP that a complainant needs to prove each of the three UDRP elements, this omission on the Complainant's part unsurprisingly affected the strength of the Complainant's case and it was only in light of his findings on the second and third requirements of the UDRP that the Panel was able to determine the respective disputes.
Given the weakness of the evidence produced in relation to the first element of the UDRP, the Complainant might consider itself lucky to have obtained a transfer decision in the <atlasshruggedmovies.com> case.
These decisions highlight the risks of using the UDRP inappropriately and show that there is no room for approximation under the UDRP. It is also a reminder that although faster and cheaper than court proceedings, the UDRP is not a loose one size fits all alternative to court proceedings and that complaints filed under the UDRP are reviewed with a fine-tooth comb. The principles and requirements of the UDRP simply cannot be ignored by complainants and their legal counsel.
To read the <atlasshruggedmovies.com> decision please go to: http://www.wipo.int/amc/en/domains/search/case.jsp?case_id=20554
To read the <atlasshruggedmovie.com> decision please go to: http://www.wipo.int/amc/en/domains/search/case.jsp?case_id=20477