It continues to surprise that some counsel in proceedings under the Uniform Domain Dispute Resolution Policy (UDRP) are unaware or oblivious of its evidentiary demands, by which I mean they file and certify complaints with insufficient evidence either of their clients’ rights or their claims. Because the UDRP requires conjunctive proof of bad faith registration and bad faith use (as opposed to the disjunctive model of the Anticybersquatting Consumer Protection Act), it should be ingrained for counsel experienced in the jurisprudence to know they cannot hope to succeed with marks postdating registration of domain names.

Yet, whatever the level of counsel experience with UDRP jurisprudence suing when there is no actionable claim is a recurrent feature on the docket. Examples: Puretalk Holdings, LLC v. Domain Administrator / Fundacion Privacy Services LTD, FA1906001848525 (Forum August 5, 2019) (<pure talk.com>, mark postdating domain name registration by15 years); Art-Four Development Limited v. Tatiana Meadows, D2019-1311 (WIPO July 29, 2019) (<aizel.com>, also postdating by almost 15 years). In Femida a/k/a International Legal Counsels PC v. Reserved for Customers / MustNeed.com, FA1906001847829 (Forum July 25, 2019) the postdating is quite short, but still “Respondent’s domain name was registered before the first use and registration of the Complainant’s mark.”

Claiming cybersquatting against domain names predating marks in commerce is obviously misguided, but challenging domain names with deficient evidence of a mark’s right or a respondent’s bad faith is careless or worse. It is no more sufficient to have a naked right than it would be for complainants to succeed on respondents default. Respondents did not appear in Pure Talk and Art-Four; Complainants failed because it was impossible for them to succeed. The answer to why complainants fail depends in part on complainants linguistic brand choices, and in another part, on failing to marshal proof supporting their claims. For marks composed of dictionary words, descriptive phrases, and short strings of letters, the evidentiary bar is higher because complainants are not alone in the sole magnets for having associations with allegedly infringing names. The bar is higher still for complainants of unregistered marks.

Whereas complainants of registered marks have standing by virtue of their registrations, those with unregistered marks only have standing on proof of secondary meaning antedating registration of the challenged domain name. (Under the ACPA the “mark [must be] distinctive at the time of the registration of the domain name” regardless whether registered or unregistered). Applications awaiting approval by trademark registries are not deemed to qualify as a right; nor are marks registered on the Supplemental Register in the US, although unregistered rights may include trade names and personal names if they are found to be functioning as trademarks. (See earlier essay Do Trade Names Qualify as Trade Marks for Purposes of the UDRP?)

Both ICANN Panels and US courts (and, no doubt, other jurisdictions) insist that proof of secondary meaning “includes evidence as to (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures.” The Panel in Facele SPA v. Jason Owens, D2019-0140 (WIPO July 28, 2019) (<facele.com>, Complainant represented by counsel) gives a thoughtful discussion of these expectations:

Even if the Complaint had only included details of the Complainant’s pre-2010 sales and advertising figures accompanied by examples of how the mark has been used, that would have been helpful. (Emphasis added).

Since the facts the Panel references should be within a complainant’s knowledge and control, failure of proof, evasiveness, or silence supports an adverse inference that the mark was not used before the registration of the domain name; if it were, the proof would have been submitted (or carelessly omitted).

A good illustration of this deficiency of proof is Empire Engineering LTD v. Liamuiga LLC, FA1906001847862 (Forum July 22, 2019) <empireengineering.com>). In this case, Complainant (represented “internally” presumably by an attorney) had to deal with the descriptive nature of the alleged mark. While the phrase “empire engineering” is hardly striking as an indicator of source, it is certainly capable of functioning as a mark. However, the Panel dismissed the complaint because “Complainant has not provided evidence of secondary meaning with respect to the expression ‘Empire Engineering’”. As in Facele SPA, Complainant (but more particularly its representative) failed to take into account the quality of and demand for proof to establish rights under paragraph 4(a)((i) of the Policy.

Failure to establish common law rights also sunk Complainant in Aurora Cannabis Inc., Aurora Marijuana Inc., Aurora Cannabis Enterprises Inc. v. Byron Smith, D2019-0583 (WIPO July12, 2019) (<auroradrops.com>). The Panel held

If there was indeed common law use of the AURORA DROPS at any relevant time by the Complainants, proof of that use was also deficient. This may be a function of the fact that the marijuana market in Canada was only operational at full scale beginning in October 2018. In any event, the Complainants’ evidence of common law rights has not satisfied the Panel that there was a substantial reputation as of April, 2017, when the disputed domain name was registered. The Complainants’ belated attempt to register AURORA DROPS has only served to muddy the waters.”

The underlying concept of secondary meaning is proving reputation in the marketplace, not now but then. The evidence must be sufficient to show that the mark would have been recognized by consumers as a source of complainant’s goods or services.

The same deficiency is noted in another common law claim, Dakota Access, LLC (c/o Energy Transfer LP) v John Saldis, FA1906001849464 (Forum August 6, 2019) (<dakotaaccess pipeline.com>). Here “Complainant has not adduced any evidence of trademark registration.” While it “contends [it] has used the DAKOTA ACCESS PIPELINE name in publicity materials, contracts, and filings with state and federal regulatory agencies,” it has not produced them:

The only supporting evidence adduced by Complainant is a presentation deck named “Energy Transfer LP Investor Presentation—June 2019”. It is unclear to the Panel how this presentation deck supports Complainant’s contention. This 45-page presentation deck seems to only have one reference to “Dakota Access Pipeline” in a map, without any elaboration as to the relationship of “Dakota Access Pipeline” with either Dakota Access, LLC or Energy Transfer LP. In addition, while the timing of when a complainant has acquired common law rights in a mark is not relevant for the panel in deciding on this element, the Panel notes that this presentation deck is dated June 2019, which is later than the creation date of the disputed domain name (September 18, 2016).

Even where marks allegedly predate domain name registrations, complainant’s must still anticipate legitimate interests and rights defenses squarely undercutting their claims of cybersquatting. In Royal Caribbean Cruises, Ltd. v. James Booth, BQDN.com, D2019-1042 (WIPO July 17, 2019) (<rcc.com>) Complainant argued that the three-letter string infringed its unregistered four-letter acronym, “rccl.” This raised a problem as summarized by the three-member Panel:

the Respondent raises a reasonable question regarding whether a four-character mark which is an initialism or acronym can be found to be confusingly similar to a three-character domain name which, as here, shares part of the same character set. The Respondent points out that, if a finding of confusing similarity is made in those circumstances, the logical extension is that all four-character initialisms/ acronyms would be regarded as confusingly similar to all partially corresponding three-character domain names. (Emphasis added).

Interestingly (and unusual), the Panel declined to make a ruling under Paragraphs 4(a)(i) and 4(a)(ii) and rested its dismissal of the complaint on 4(a)(iii):

The Panel is inclined to favor the Respondent’s case on registration in bad faith [and] accepts that the Respondent more probably than not acquired the disputed domain name due to its value as a short, ubiquitous and memorable three-letter string which would be attractive to a wide variety of existing and potential entrants to the marketplace rather than in a bad faith attempt to target one specific rights owner in the form of the Complainant.

In fact, such findings under either 4(a)(ii) or 4(a)(iii) have been made “in multiple past cases.” For example, the panel noted in Compañía Logística de Hidrocarburos CLH SA v. Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc, D2018-0793 (WIPO June 13, 2018) (<clh.com>) that “it is commonly accepted that absent factors to the contrary in a particular dispute [of which there are none offered in this case], trading in domain names is a legitimate activity that has grown into a substantial market over the years.”

The facts in A Mediocre Corporation v. Domain Admin / Domain Registries Foundation, FA190600 1849931 (Forum July 27, 2019) (MORNING SAVE and <morningsafe.com>, Complainant represented by counsel) look like a textbook example of typosquatting, substituting an “f” for a “v” (which on the Qwerty keyboard sits immediately below the “f”). I like Andrew Allemann’s comment on DomainNameWire.com because it suggests an approach which counsel did not pursue and was not taken into account in deciding the case:

There are plenty of Wayback Machine screenshots showing early use of the MorningSave. These could have been included with date stamps to show the [earlier] use.

Although the Panel rejected Complainant’s argument, it more appears the dismissal was based on Complainant’s failure to offer the necessary proof to support its claim. Complainant’s contention based on constructive notice was rejected as not applicable in a UDRP proceeding (counsel should have known this!).

Mr. Allemann may very well be right about Mediocre that counsel could have done better. It applies to other cases of which it could be said that but for the deficiency of proof, the result would have been different if proof had been properly marshaled. For example, in Numerix LLC v. Dagmar Brebock, FA190600 1846731 (Forum July 25, 2019) (NUMEREX and <nurnerix.com> the confusing similarity is with the “rn” which replaces the “m.” It would not be unreasonable to ask, who got it wrong the Panel or Complainant’s counsel? The Panel found that Complainant limited its proof to asserting that “Our domain name Numerix.com has been registered and in use since at least 1998 with corporate formation in 1996.” An astute commentator (Evan Brown this time, udrptracker.com) offered the following “practice tip”:

If you own trademark registrations, be sure to actually plead them in the complaint. This UDRP case should not have been lost on these grounds. Some panels cut no slack, even when there is obvious evidence outside the record.

What Mr. Brown means by “outside the record” is that Panels are not forbidden to do research on the Internet and trademark databases, which it didn’t do hence his wry comment that “some panels cut no slack.” Substituting “rn” for “m” is right out of the squatters handbook: <rnerial.com> for MERIAL, <ernersson.com> for EMERSON, <freernanco.com> for FREEMAN, are some examples, all of them resulting in transfers. There is no indication that Complainant’s counsel in Numerix brought this history of typosquatting practice to the Panel’s attention. (This is probably a good candidate for an ACPA action).

If only for instructional purposes, complainants and their counsel should pay close attention to Panels’ reasoning of what evidence is necessary to satisfy claims of cybersquatting. As I have pointed in earlier essays, complainants only get one shot in a UDRP at proving cybersquatting; there is no such pleading as an “amended complaint” under the UDRP. See UDRP Complaint: Actually, a Motion for Summary Judgment and Words and Descriptive Phrases as Trademarks Registered as Domain Names.