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Proving and Protecting Rights to Domain Names

At their best, UDRP panelists are educators. They inform us about the ways in which parties win or lose on their claims and defenses. What to do and not do. In addressing this issue, I’m referring to less than 10% of cybersquatting disputes. For 90% or more of filed complaints, respondents have no defensible answer and generally don’t even bother to respond. But within the 10%, there are serious disputes of contested rights (contested even where respondent has defaulted). In following the decisions in these disputed cases, we learn that those who lose (whether complainant or respondent) fail in the mechanics of argument: marshaling the right facts, supporting their contentions with documentary evidence, and organizing materials into coherent narratives.

Panels help us to see this. Complainant in Distinct Holdings, Inc., d/b/a Diversified v. Robert Schweitzer, FA1706001737080 (Forum July 27, 2017) owner of DIVERSIFIED succeeded in having four domain names transferred, while Complainants in High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA1706001737678 (Forum August 9, 2017) owner of VOICE OF HOPE and Opus Group AB v. Opus Group LLC, D2017-1061 (WIPO July 12, 2017) owner of OPUS lost in gaining control of domain names corresponding to their marks. In all three disputes, the marks are either dictionary words—DIVERSIFIED and OPUS—or common expressions—VOICE OF HOPE.

In Distinct Holdings, Complainant carefully anchors facts to documentary proof. This technique calls for a response (it demands rebuttal), but the Panel concluded that “Respondent’s whole case [is] unpersuasive. The known facts are those set out [by Complainant] and it was incumbent on Respondent to give to the Panel an explanation for” acquiring <onediversified.com>, <onediversified.info>, <onediversified.net>, and <onediversified.org> when it had actual knowledge (as a former employee) that Complainant was in the process of rebranding itself to “One Diversified.”

To the same extent it was “incumbent on Respondent” in Distinct Holdings, so it was (in reverse) with Complainants in High Adventure Ministries and Opus Group. They either had no provable facts (as summarized, their “facts” are essentially conclusory or allegations of inference) or if provable facts exist they failed to marshal them. In High Adventure Ministries, the Panel stated that it was “unable to find that Complainant has made out a prima facie case.” Even, “if there were a prima facie case [the Panel continued], the totality of the evidence has clearly rebutted it.”

In Opus Group, Complainant failed in two ways. First, by blindly assuming it had an exclusive right to a string of characters that before they could ever be recognized as a mark is simply a generic term (Respondent defaulted, but there were unresponded to facts of record). The Panel found no

justification on the evidence before it for the Complainant’s assertion that “it is obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the Domain Name.” The Panel does not accept that, even if there were evidence that the person registering the Domain Name <opusgroup.com> was aware of an entity carrying on business as Opus Prodox that owned the registered trademark OPUS PRODOX, this would demonstrate that the registration was likely to have been in bad faith.

Secondly, Complainant made no effort to deal with the fact of record (that is, a category of facts that parties ignore at their peril):

The Complainant entirely ignores the fact that the WhoIs-listed Registrant Organisation is “Opus Group LLC” and that, leaving aside the corporate tag “LLC”, the Respondent may not only commonly be known by the Domain Name but, on its face at least, the Domain Name is its name. The Complainant has not disputed this or adduced any evidence throwing doubt on the bona fides of the Respondent as to its name, or as to when the Respondent was incorporated by that name or as to the activities of the Respondent company.

These last two decisions involve respondents engaged in businesses of their own. This is also true of Respondent in Commune de Versailles Collectivité Territoriale v. Kimberly Kubalek, Kubalek, LLC, D2017-0985 (WIPO August 24, 2017) (<visitversailles.com>). She operates websites incorporating geographical terms, so it’s a business built around a theme as opposed to acquiring domain names for resale. “Versailles” is generic but since Complainant owns a French trademark in the term it had standing to maintain the proceeding. However,

The disputed domain name itself uses a first element “visit” as a prefix for “Versailles” which is entirely consistent with a descriptive use of a geographic name for a place, rather than the abusive use of a trademark.

The Panel notes further that

in terms of demonstrable preparations, Respondent does operate an active tourism website at “www.visitsanmiguel.com”, which provides travel information to visitors of San Miguel in Mexico and that at the bottom of such website Respondent includes the message “Visit our other sites”, and links to websites referring to other geographical locations, such as “www.visitcuernavaca.com” and “visit-tahoe.com”.

The Commune de Versailles Respondent offered a coherent narrative together with proof of her business model. These were the persuasive elements of her defense.

Different demands are made on high-volume acquirers. Respondents in the business of monetizing and reselling domain names, and others experienced or knowledgeable in Internet technology and culture early came under additional scrutiny. This is particularly the case with domain names that incorporate marks combined with generic terms that could reference back to complainants, which if passively held support lack of rights or legitimate interests.

The scrutiny is illustrated in an early case, Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001). Respondent (admittedly a knowledgeable Internet analyst) registered the recently lapsed domain name <renfe.com>. The Panel held that

where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.

There was a vigorous dissent in this case, but the majority view for lapsed domain names (assuming the marks have established themselves in the marketplace) is the consensus opinion: “when the facts demonstrate clearly that someone else has been extensively using the Domain Name and that it has obvious value, at least some minimal investigation is required in order to dispel the logical inference that the Domain Name is someone else’s trademark or at least another s well-known business name.”

If panelists have a skeptical view, respondents must anticipate it. It applies equally to high-volume registrants who “through automated programs . . . snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks.” Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006) (<wcmh.com>). “Such practices” (the Panel continued) “may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.” “Pattern of conduct” is a showing complainant must make and respondent rebut.

Whether there are such “patterns of conduct” is answered by taking into account respondents’ business histories. I think it can be said that as a general rule, though, investors specializing in curated categories of names, such as 2 to 5 letter strings, place names, surnames, dictionary words, and descriptive terms that have market values independent and unrelated to any association with complainants’ marks and used for their common meanings are less vulnerable to losing their domain names than high-volume registrants who must explain how their acquisition policies avoid sweeping in infringing domain names (indicated in Media General Communications). These vacuuming cases had their day but are not much seen recently, although they could return as major portfolios change ownership.

The cases that are seen involve domain names that are identical or confusingly similar to weak marks. In this group Respondents (generally well represented by counsel knowledgeable of the jurisprudence) are careful to include their histories (and copies of their websites) in responding to complaints:

The more deliberate strategy for acquiring domain names for specific purposes (curating a portfolio of domain names) the greater the likelihood that the registrations will not be found unlawful.

The expectations that respondents of themed domain names prevail is upended in a surname case, Ruffino SRL v. Stanley Pace, FA1706001735061 (Forum July 20, 2017) (RUFFINO and <rufino.com>). Respondent owns a portfolio of 10,000 surnames including which Complainant argues is a typo infringement of RUFFINO while Respondent argues the name (purely and simply) is a surname, albeit not in the category of “Smith” or “Brown” but nevertheless lawfully registered. The question in Ruffino SRL is whether Respondent offered the right balance of evidence or the Panel reached its decision by drawing negative inferences from conclusory allegations.

If the Panel stepped into error, we are destined to learn since Respondent has commenced an ACPA action for declaratory judgment that the registration was not unlawful.

For complainants and respondents alike it is not sufficient to make conclusory allegations or allegations based on inferences. The evidentiary demand is for facts supported by documentary evidence; or evidence of sufficient weight to permit the drawing of reasonable inferences. This is not party specific!

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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