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How Ignorance Can Lead Mark Owners Astray in UDRP Proceedings

The great problem with ignorance is that it leads to disaster when one acts in the belief that he (and not infrequently a corporate “it”) is invulnerable to error. The Uniform Domain Name Dispute Resolution Policy (UDRP) is fundamentally a straightforward rights protection mechanism, but as in all clearly written laws, ignorance of its application and of its evidentiary demands can (and generally does) lead to disaster. Mark owners are not entitled to relief because they own marks; resellers are not liable as cybersquatters because they hold domain names identical or confusingly similar to complainants’ marks. Any complainant who has a mark, regardless of the timing of its first use in commerce, has standing to maintain a UDRP proceeding, but the catch—and here is where the uninformed need specialized counsel—if a mark postdates the registration of a domain name uninterruptedly held by a respondent the complainant has no actionable claim. Such a circumstance is found in Sahil Gupta v. Michal Lichtman / Domain Admin, Mrs Jello, LLC, D2020-1786 (WIPO September 15, 2020) (<spase.com>). Complainant (by all measures innocent of any understanding of the UDRP and believing in the rightness of his cause) “asserts that the Respondent registered and is using the disputed domain name in bad faith [because it] has acquired a well-known and longstanding reputation of ‘domain squatting’ for the sole purpose of hoarding domains names to extort the trademarks of business owners.”

Setting aside Mrs. Jello’s reputation as a reseller of domain names, whatever it may be, it has a lawful right to “hoard[ ] domain names” in pursuit of its business, and if its acquisition predates the trademark or service mark, its domain name is invincible to forfeiture. If, and this is a big “if,” the domain name resolves to a website demonstrably infringing complainant’s mark, there could possibly be a case of trademark infringement, but that’s not a claim actionable in a UDRP proceeding.

However, in this case, the evidence is simply that complainant acted in ignorance of the law and now finds himself the butt of mock and jears which he finds humiliating (if I read the Tweet-leaves correctly). The decision indicates complainant was “internally represented.” I trust this is a euphemism for the party himself without guidance from knowledgeable counsel. I will say, however, that despite his having done all the wrong things, he is innocent; a small player. There have been far worse by complainants represented by lawyers in large and sophisticated law firms who really deserve censure. See, for example, also sanctioned with reverse domain name hijacking Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, D2020-1577 (WIPO September 1, 2020) (<mountaintop.com>). Mocks and jeers should rather be reserved for complainants’ sophisticated counsel who litigate in ignorance of the law.

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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