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Posted on February 18, 2020

Domain Name Complaint Drafting Tips

By Claude Freeman LL.M. C. Med. C. Arb.

Over the past 15 years or so, I have been involved as arbitrator in quite a number of .ca complaint arbitrations, either as sole arbitrator or as a panelist member on both English and French matters.

I would say that most, if not all .ca complaints (pleadings) often seem to follow a nicely, well organized sequence of information making up the salient substance of the complaints.

This means that the information/complaints submitted provide the information necessary for the arbitrator(s) to effectively do their work, and arrive at well-reasoned decisions that the readers should easily understand.

Corporate narratives and Legitimate Interest:

That being said, some complaint drafting suggestions could be helpful for domain name complaints, but can also be helpful for other matters (especially corporate matters) where a preamble of the Complainant’s past corporate history and longevity helps create a picture of the Complainant’s prominence.

This doesn’t mean that corporate prominence makes for an instant, favorable decision. Statistically speaking, historical prominence usually carries good weight in terms of a decisional outcome. The reason being is that a well-planned and written preamble of the Complainant’s corporate history helps the arbitrator create a visual roadmap of one of the key issues most arbitrators start looking at with domain name complaints, that being of “legitimate interest”.

Legitimate interest ranks highly in terms of the debate between the parties, that of trademark “ownership”, and which party was the first to legally crystallize their ownership in a name. Crystallized or proven ownership is a major milestone in terms of having arbitrators understand where to start with the logic and reasoning of the decision-making process.

In no way does this dismiss the importance of the other salient issues of “confusingly similar” and “bad faith”. If a Complainant however, fails to start with a strong, compelling and legitimate ownership narrative, then perhaps the arbitrator can’t easily work through the “legitimate interest” issue, but has to begin ruminating with the other issues. With many .ca arbitrations now in the rearview mirror, I can say that providing for a well-written “legitimate interest” narrative up-front is what makes the rest of the decision-making and decision drafting process easier.

Part of the “legitimate interest” narrative doesn’t just deal with the past corporate history and antecedents, it also deals with the date(s) of trademark application/registrations as well, but they most always end up supporting the antecedents and thus the “legitimate interest”.

Let’s look at two very quick examples of legitimate interest, corporate history narratives:

Example #1

The Complainant’s history dates back to 1952, when it was incorporated by the then owner to manufacture electronics, and at the time had 47 employees. Since then it has grown to expand and is now a notorious manufacturer and supplier of electronics and accessories across the globe. It now has 33 manufacturing facilities across North America, and now has 5,339 employees, has reported income of 2.2 billion dollars worldwide, and is not only a well-known name in industry, but is also a well know and popular household name.…etc. The Complainant is prominent with regular television/radio and print advertising, as well as with social media activity. Its trade name was registered in 1954 with the US Trademark office……etc.

Example #2

The Complainant has been in business since 1983, and is active in providing high-tech solutions for small and medium-sized businesses. It registered its trademark in 1985 under its then ownership, then later registered an amended version in 1990. The rest of the narrative goes through quite a longer litany of historical trademark registration events.     

Clearly, the first example has a nice gradual narrative that permits the reader/arbitrator to capture the Complainants history and antecedents, after which the chronological trademark registration history follows.

The second example only gives a cursory glimpse of the complainants corporate history, and then starts down a trajectory of registrations and related amendments. It really doesn’t permit the arbitrator to paint a nice chronological picture of the complainants history and corporate prominence, and it doesn’t easily lead the reader/arbitrator to understand how the trademark registration(s) history is supported by the historical corporate narrative.

My past business background and experience with high-end corporate leasing and banking arrangements required (and still requires) a well-organized corporate narrative of the borrowing entity to be the opening page of the loan approval (or denial) of all lending approval write-ups. This set the stage for the rationale for the financials that followed in support of the approval. The same approach is also taken with due diligence, and merger/acquisition processes as well. All this is all very analogous to corporate history narratives and trademark registrations for .ca matters discussed earlier, but without the frequently exhaustive details required in lending, due diligence, and merger/acquisition matters.

Not providing all of the corporate narrative history available for the arbitrator(s) to paint a full canvas of information, can make understanding of the trademark history somewhat longer and sometimes more complicated for the arbitrator(s) and possibly the eventual readers.

In some cases, the absence of narrative corporate history can mean that a possibly long litany of the trademark registration history will have to be used as the legitimate use pleadings, thereby greatly extending the length of the decision itself.

Though arbitration decisions are deemed binding and final decisions, any editorial help the parties provide the arbitrator(s) ensures an additional amount of insurance against any confusion relating to solidifying the issue of legitimate use.

Confusingly Similar and Bad Faith

We’ve spent some time reviewing the importance of corporate narratives as they apply to the issue of building a case for legitimate use, however we also need to look at another aspect of complaint drafting which also includes the other two key components of domain name complaints, those of “confusingly similar” and “bad faith”.

By past experience, I’ve found that the complaint components are usually well presented or planned out, with one slight exception, though only from an editorial perspective.

On some occasions, I find that any arguments or cases presented, based on prior domain name decisions (case citations), in support of the complaints are sometimes scattered throughout the pleadings.

Although we understand the need to thread one’s pleadings or arguments, by way of some form of chronology, perhaps from an editorial perspective, it might be helpful to try to group the case decision citations in an orderly form at the end of each complaint segment (legitimate interest, confusingly similar and bad faith).

Doing so, will allow the arbitrator to more easily read, follow and understand the complainant’s logic or rationale, and then refer to the supporting case decisions/citations in support of those arguments.

Summary:

This article isn’t meant to infer either right or wrong ways of drafting complaints. It simply reflects the fact that we all have different ways of drafting arguments and the accompanying information, such that the complaints make for arguments designed to convince the arbitrators.

Besides, if we all have different ways of drafting complaints, then as arbitrators we have different ways of tackling and processing the information put before us. 

Making the process easier for the arbitrators to grasp and understand from the outset and all the way through the complaint, makes for a much smoother decision-making process.  

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