© 2019 Steven M. Levy, Esq.
In 1977 Billy Joel released his blockbuster album The Stranger. One of the songs that got far less radio play than his well-known hits was titled Get It Right The First Time. While he was writing the song, I expect Billy Joel wasn’t exactly thinking about trademark disputes. But then I’ve always felt the wisdom of this song extends beyond the bounds of his original concept.
In 2018 alone there were over 5,500 domain name complaints filed under the Uniform Dispute Resolution Policy (“UDRP” or the “Policy”) worldwide. Since the inception of the UDRP in 1999 there have been well over 70,000 total cases filed. The majority of these are well prepared but some of them are not, sometimes with disastrous results for complainants. A denied UDRP case typically cannot be re-filed unless there are extraordinary circumstances such as misconduct by a Panelist or party, or newly discovered evidence that could not have reasonably been found when the original complaint was filed. So you usually only get one bite at the apple.
As a UDRP Panelist I’ve seen a few bad complaints, perhaps filed by inexperienced or overzealous party representatives. Many simply underestimate the Policy thinking that it’s a simple fill-in-the-form exercise where victory is all bus assured. This couldn’t be further from the truth. Although, by design, UDRP cases are far less complex than courtroom litigation, they still require careful attention to detail and a full understanding of the nuances of the Policy, its rules, and the rich body of guidance that has developed through 20 years of issued decisions.
To help encourage better UDRP practice (or at least to entertain you if you’re already a well-versed UDRP practitioner) I’d like to share with you some of the more common problems I’ve seen over the years.
Missing A Critical Exhibit
One of the most common errors is the failure to provide an exhibit proving a critical element of the complaint. For example, it’s absolutely necessary to show that the complainant owns relevant trademark rights in order to even get your foot in the door on a UDRP case. However, I’ve seen cases where there’s no trademark registration certificate or support for common-law rights included in the submitted evidence. The same goes for claims that a mark is famous or otherwise enjoys a wide-ranging brand reputation. If there are no documents from which the Panel can determine the scope of trademark rights (geography, goods, fame) then a complaint may get tripped up before it even has a chance to address any harm that the disputed domain may be causing.
Another glaring omission can be the failure to submit a copy of the Whois record showing ownership of the disputed domain name so that the Panel can see that the case is brought against the correct party. Sometimes it’s also necessary to submit evidence showing the ownership history of the disputed domain. This can be especially helpful in cases where the current owner is not the original owner but acquired the name some time after its creation. It doesn’t come up often but this can help defeat a laches defense and avoid the perception that the complainant unreasonably delayed in taking action against the disputed domain name.
No discussion of this topic would be complete without mention of a failure to submit copies of a respondent’s website, emails, or other evidence of how the disputed domain name is being used. If a complaint claims that the domain resolves to a website containing monetized (pay-per-click) links that compete with the complainant’s brand, then it is well advised to include a screenshot of that website showing those links and perhaps even an example or two of the third-party websites to which they lead.
The same goes for other fact statements that need to be supported by evidence. One common example is where complaint claims that counterfeit, grey market, or stolen products are being offered through a disputed domain name’s website. It’s not always easy to prove whether a product is genuine or fake, where it was manufactured, or whether it’s been stolen. But there are things that one can point to that strongly indicate that this is the case including screenshots of a website showing the product being offered at an unusually low price, pictures showing that the offered goods differ from genuine products, customer complaints about the accused products posted at online message boards, etc. While the evidentiary standards for UDRP cases are not nearly as stringent as those applied in most courts, the parties need to do more than make unsupported and conclusory claims expecting a Panel to accept them on faith or based on a respondent’s default.
Too Much Evidence Of Trademark Rights
In some cases complainants submit images of a few carefully selected trademark registration certificates. Others only mention a registration number but don’t provide any evidence to prove the registration. But some throw in the kitchen sink and submit a list of their entire, worldwide trademark portfolio and sometimes including marks that are not even relevant to the present case. While not really a critical error, this can be an annoyance to Panels. It has the tendency to create either an image of careless drafting or it could, in a worst-case scenario, imply to the Panel a lack of confidence in one’s case by engaging in evidence overkill.
Naming And Relationship Of Parties
When I review a complaint one of the first things I do is check to see if the complainant’s name is the same as that listed in the submitted trademark registration certificate. Filing a complaint in the name of the wrong party can absolutely sink a case and so providing a copy of a recorded assignment or at least explaining that an assignment has occurred can help a Panel understand who are the correct parties in interest.
In those cases involving multiple complainants – for example where the case involves more than one domain name or a domain that copies more than one trademark – it’s necessary to explain how these complainants are affiliated and, if possible, to provide some supporting evidence. While actual corporate documents would more than suffice, this evidence could be something as simple as a screenshot of an “About Us” page at the company’s website or even a Wikipedia entry for the company that explains the relationship. Without this, a Panel may be left to decide a case for only the complainant who can be connected with the asserted trademark through the evidence presented and the other complainant may not obtain the relief to which it would otherwise have been entitled.
Plan B Cases
These scenarios are particularly dangerous since UDRP Panels will often chastise the complainant as proceeding in bad faith and are likely to find reverse domain name hijacking (“RDNH”) under UDRP Rule 15(e) (“the complaint was brought in bad faith … or was brought primarily to harass the domain-name holder….”) The name “Plan B” refers to a complainant’s use of a UDRP complaint as a backup after its attempt to purchase the domain name (plan A) fails. A typical scenario begins where the complainant wants a particular domain name that’s already taken by someone else. Perhaps they’ve come up with a new product, are rebranding an existing one, feel the words in the domain are relevant to their industry, or their company has new management who asks “why don’t we already own that website address?” So they reach out to the domain registrant and inquire about a purchase but the asking price is too high. Maybe the registrant realizes they’ve got a tiger by the tail where a company has already publicly launched its new brand and the domain name is suddenly getting lots of traffic.
After failing to negotiate a purchase, the brand owner, or its counsel, considers using the UDRP as an inexpensive alternative to going to court. Perhaps they believe that filing a complaint will give them leverage in negotiating a purchase. They may also have read that ¶ 4(b)(i) of the Policy says that bad faith registration and use of a domain can be demonstrated where the registrant attempts to sell the disputed domain name to “the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name.” So a UDRP complaint is filed and the domain owner either responds to defend itself (sometimes with very experienced UDRP defense counsel) or, more often, it defaults in the case. The Panel then gets the case and quickly discovers one of a number of things. Maybe the disputed domain name was created prior to the earliest date on which the complainant can prove trademark rights; the domain name is made up of generic or descriptive terms and is not targeting the complainant’s trademark; or the domain is used legitimately and for non-competitive purposes. In these situations, even a respondent’s offer to sell the name at a very high price may not, alone, carry a claim of bad faith.
Panels may find RDNH in Plan B cases as the complaint was brought in bad faith, to harass the domain registrant, or with a complainant’s knowledge that it had no reasonable chance of success in the claim. Of course, if the asking price for a domain was high before the UDRP complaint was filed, you can just imagine where it goes after a decision denying the case. These scenarios can be avoided by careful pre-dispute assessment and either pursuing a strategy that will bring the desired result, or revising one’s brand strategy if the domain name is simply unobtainable at a palatable price.
Filing a UDRP complaint should not be taken lightly. Just as with any other legal dispute, it should be handled carefully and with proper research and evidence. After all, this is still arbitration. And, while the rules do allow Panels to seek out evidence on their own (ex. Whois lookup, review the respondent’s website, etc.), it’s never a good idea to expect a Panel to do a complainant’s own homework. Carefully evaluating, planning, and presenting a UDRP case may make the difference between victory and an awkward conversation with a client. So, yes, you’ve got to “get it right the first time”. That’s the main thing…