Although including multiple domain names in a single UDRP complaint can be a very efficient way for a trademark owner to combat cybersquatting, doing so is not always appropriate.

One particularly egregious example involves a case that originally included 77 domain names—none of which the UDRP panel ordered transferred to the trademark owner, simply because consolidation against the multiple registrants of the domain names was improper.

The UDRP case, filed by O2 Worldwide Limited, is an important reminder to trademark owners that they should not overreach when filing large complaints—at least when the disputed domain names are held by different registrants.

The Same Domain-Name Holder

Under the UDRP rules, a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” As a result, many UDRP complaints include multiple domain names—from two to as many as more than 1,500.

While this UDRP rule may seem straightforward, it can become more complicated in practice, especially as some clever cybersquatters try to hide behind aliases to frustrate trademark owners.

Where the registrants appear to be different, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, says that UDRP panels often consider the following in considering whether it is proper to include multiple domain names in a single complaint: “whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”

The Overview adds: “Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

Not Procedurally Efficient

In the O2 case, the panel found that consolidation was not appropriate, based on a most unusual set of facts. O2 had argued that “unifying features… link all of the domains” and that a single individual “maintain[ed] common control” over all of the domain names.

But the panel strongly disagreed, noting that 25 different entities were named as respondents for the 77 domain names in the original complaint. Incredibly, the panel said:

The administrative procedure that the [WIPO] Center was required to undertake as a result of this filing involved: (i) numerous communications with four different Registrars; (ii) the withdrawal of the Complaint against 11 of the domain names due to the fact that they were no longer registered; (iii) the receipt of 20 separate communications, from 12 different Respondents or Other Submissions, respectively, each of whom appeared to be operating independently of the others and whose positions were not identical; (iv) the receipt of two separate formal Responses; and (v) the filing of one unsolicited Supplemental Filing by the Complainant.

This, the panel wrote, created an “administrative burden” that was “undue—and certainly not procedurally efficient.” Further, the panel said that because “the Respondents appear to be separate persons whose positions are not necessarily identical,” treating them alike in a single proceeding “is unlikely to be fair and equitable.”

Not only did the panel reject O2’s consolidation arguments, but it also rejected O2’s request to proceed against any of the disputed domain names:

In the Panel’s view, what the Complainant has sought to do is throw a large number of disputed domain names registered by a large number of separate Respondents into one Complaint, request consolidation on the basis of a general assertion of connectedness, rely on the Center to verify the situation of every disputed domain name and Respondent to identify those against whom the Complaint can proceed, and rely on the Panel to work through the case of every Respondent to determine in respect of whom consolidation would be fair and equitable. The Panel does not wish to encourage Complainants to adopt this approach. Accordingly, the Panel will not accede to the Complainant’s request to allow consolidation to proceed in respect of some sub-set of the disputed domain names.

Despite the panel’s ultimate denial of O2’s entire complaint (allowing all of the registrants to retain their domain names), the panel made clear that O2 could file new (but separate) complaints against some (or all) of the registrants. But, interestingly, as of this writing (more than four months after the decision date), it appears as if O2 has not done so.

More Routine Requests

Few, if any, UDRP cases raise the same consolidation complexities (or unprecedented arguments) as in the O2 case. Rather, many consolidation requests are routinely granted.

Indeed, even some large cases that involve registrants with different identities have been allowed to proceed on a consolidated basis, that is, in a single proceeding.

For example, in a UDRP case filed by United Parcel Services (UPS) for 122 domain names “owned by many different registrants,” the panel allowed consolidation because there was “sufficient evidence demonstrating that the listed domain name holders are aliases and that the domain names are controlled by a single person”—namely, that “(i) all 122 domain names were registered in October 2016, (ii) all 122 names have the same registrar, Wild West Domains, LLC, (iii) all 122 names were initially registered using the same privacy service, Domains By Proxy, (iv) the email addresses listed for each of the 122 infringing domain names follow the same general format—[email protected], and (v) all resolve to the same website—an inactive website displaying the same error message, ‘The page cannot be displayed.’”

Despite the different outcomes, the decisions in the O2 and UPS cases are consistent with each other as well as with UDRP precedent and practice. Together, they provide important lessons about the appropriateness of—but limitations on—including multiple domain names in a single complaint.