Zak Muscovitch comments on the issue of common law rights raised in the decision on <lifefenefits .com>
Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, NAF Claim Number: FA2204001991732, (UDRP Digest Vol 2.21)
In this case, the Panel accepted the Complainant’s contention that the Complainant enjoyed common law trademark rights in the term, LIFEBENEFITS. Interestingly, from the decision is it not apparent whether the Complainant disclosed to the Panel that its application for trademark registration with the USPTO was the subject of a refusal on the basis that LIFEBENEFITS was “merely descriptive”. The USPTO stated in making a final refusal and subsequently maintaining that refusal, that the application was “refused because the applied-for mark merely describes an ingredient, characteristic, function, purpose or use of the specified services”. The specified services were “Providing an internet website portal offering information in the field of financial services”. The USPTO noted in particular, that “life benefits” is a “commonly used to describe employee benefits often related to life, medical, and disability”, and cited several examples of its common descriptive use.
In this case, the Panel correctly noted that common law trademark rights are permitted under the Policy and even correctly noted that “secondary meaning” is required to be demonstrated. Nevertheless, the Panel based its finding of common law trademark rights in this case on mere “longstanding use of the LIFEBENEFITS mark, along with ownership of an identical domain name, and media recognition”. Ordinarily however, such evidence would likely be insufficient when it comes to a descriptive term such as “life benefits”, in contrast to the case cited by the Panel in support of its finding and which involved a particularly distinctive term, MARQUETTE GOLF CLUB, and which was the subject of “intense efforts to advertise and promote the golf club” (see Marquette Golf Club v. Al Perkins, Forum Number: FA1706001738263, July 27, 2017<marquettegolfclub.com>).
When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a complainant under the Policy, when in reality the complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580:
“The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
This case also raises the issue of to what extent a Complainant is required to disclose such unhelpful facts as a USPTO refusal for the very mark which it alleges is the subject of trademark rights. The UDRP Rules require a Complainant to certify that “the information contained in [the] Complaint is to the best of Complainant’s knowledge complete and accurate”. If the Complainant in this case did not disclose to the Panel that its claimed trademark had been refused by the USPTO, the Complainant may have breached its certification of a “complete and accurate” Complaint and thereby deprived the Panel of crucial facts which could have altered the outcome of this case.
Igor Motsnyi comments on the issue of infringement claims under the UDRP raised by the decision on <mashabearcafe .com>
ANIMACCORD LTD v. Halina Yatskevich, WIPO Case No. D2022-3254, (UDRP Digest Vol. 2.48)
Igor Motsnyi is an IP consultant and partner at Motsnyi Legal in Belgrade, Serbia.
Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. Igor has been the Panelist in over 40 UDRP cases (See: https://udrp.tools/?s=fd6013f9). The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
……..
I would like to thank the Internet Commerce Association for the opportunity to comment on this decision.
I do find the <Mashabearcafe.com> UDRP decision interesting as a UDRP panelist, as IP counsel advising clients on trademarks and domain names, and as a person who was born and grew up in the former Soviet Union who is familiar with the origin of the “Masha and the Bear” story.
<Mashabearcafe[.]com> is, in my opinion, a case which makes us think again about the UDRP’s original purpose and scope. It also brings up some interesting cultural issues.
There are some points relevant to this dispute that I would specifically highlight:
- The Respondent registered (acquired) the disputed domain name on October 1, 2021 and it resolves to a website promoting the Respondent’s restaurant in Colorado offering Eastern European cuisine. The Respondent registered “Masha and the Bear Russian Café” as a trade name on December 19, 2018;
- The restaurant has been in business since 2016 and was acquired by the Respondent in or about December 2018 or January 2019 and there are positive reviews about the restaurant;
- “Masha and the Bear” is a popular old Russian fairy tale and every kid who grew up either in Russia or somewhere close is very well familiar with this story;
- The Complainant admitted that its TV series is “loosely based on a Russian folk story” and the Respondent claimed she “chose the restaurant’s name because of its Russian folklore heritage”;
- Respondent’s explanations for her choice of the name seem plausible to me given the popularity of the story among the relevant public. Indeed, for a person from the former Soviet Union, “Masha and the Bear” is a perfectly normal name for a Russian/Eastern European restaurant;
- The Complainant has a number of “Masha and the Bear” trademarks, yet only one of them is registered for “restaurant and café” services and this mark was registered after Respondent’s “Masha and the Bear Russian Café” trade name registration and after the launch of the restaurant;
- There seems to be nothing on the record to indicate that any images or any signage related to “Masha and the Bear”, the TV series, were ever used by the Respondent on her website associated with the disputed domain name and it appears that the issues relating to unauthorized use of Complainant’s copyright/trademarks had been fixed prior to the registration of the domain name by the Respondent;
- The Panel noted that:
“the Respondent appears to have acquired the business under the name, “Masha and the Bear Café”, well before the Complainant’s trademark rights extending to restaurant and café services were registered. The Respondent also appears to state that she only adopted the name Masha and the Bear Russia Café after a trademark search confirmed that the Complainant’s then registered trademarks did not extend to restaurant and café services. As set out above, that was indeed the status of the Complainant’s registered trademarks”.
The Panel’s finding in favor of the Complainant is based on the past conduct in the restaurant somewhere before May 25, 2021 and instances of infringement of Complainant’s rights via unauthorized use of imagery and characters (as the Panel notes “in circumstances where the manner of use so directly misrepresented an association or connection with the Complainant”).
The allegedly infringing activity in the restaurant occurred before October 1st, 2021 (the Domain Name registration date) and does not seem to be related to the use of the domain name by the Respondent.
It is always hard to judge a UDRP decision without having access to the case record and without seeing both Parties full arguments.
Nevertheless, the Panel implicitly acknowledged that this was not a straightforward case by issuing a Procedural Order requesting further clarifications from the Respondent but ultimately the Respondent failed to persuade the Panel.
It is clear that the Respondent knew about the Complainant and its trademarks. She might have even been engaged in copyright and/or trademark infringement at one point.
However, does this past conduct (terminated prior to the domain name registration) indicate targeting for the purpose of the Policy in this particular case, where the name itself is a part of cultural heritage and is not associated only or primarily with the Complainant?
Did the Respondent target the Complainant when she registered the domain name on October 1st, 2021, or did she do it because of her otherwise legitimate “Masha and the Bear Russian Café” business for which she also registered a trade name?
When the restaurant was launched by the former owner back in 2016, what was the idea behind the name? Was it a fairy tale known in the respective cultural community for centuries, or was it the modern-day TV series? Was the intent of the owner to target the Complainant or to use a popular fairy tale name to attract customers and to indicate restaurant’s connection to Eastern Europe?
While it is easy to understand why the Complainant was unhappy about the restaurant using its copyrighted images/other IP in the past, is this sufficient for a UDRP action which should be about domain name registration and use? Was this dispute about abusive domain name registration by the Respondent or was it somewhat more complex? Copyright and trademark infringement disputes are supposed to be resolved in courts.
To me, there seems to be far too many questions in this case (I realize that this may be partially due to my background and upbringing).
If there are too many questions, then one can argue that the case does not fit into the “relatively narrow class of cases of “abusive registrations” / “cybersquatting” (as defined by both the Final Report of the WIPO Internet Domain Name Process (April 30, 1999) and the ICANN Second Staff Report on UDRP (October 25, 1999), to be “a feature of the Policy”).
Disputes with so many issues involved are not suitable for UDRP as the courts are better equipped to handle them.
In an ideal world, we as Panelists have to apply UDRP as uniformly as possible to keep it both efficient and predictable to the parties and the community.
One of the best ways to ensure uniform application of the Policy is to stick to its original purpose as was defined back in 1999 (e.g. “relatively narrow class of cases of “abusive registrations”) and leave all other disputes to courts.
John Berryhill comments on the issues of consolidation, descriptive marks, and state trademark registrations raised in the decision on <dogandcatsshots .com> and 28 other domain names
Case Comment by Case Comment by UDRP Counsel, John Berryhill. John Berryhill has handled hundreds of UDRP cases since 2001.
Consolidation
The case was filed against multiple respondents. One defaulted, and two responded via email in some manner. The standards for consolidation of multiple domain names into one dispute can be flexible. But in this instance, two of the respondents answered in some way by email, indicating they were two different parties. The UDRP allows multiple related complainants, multiple domain names, and multiple related respondents where some connection can be shown. See UDRP Rule 10(e) and also see Policy Paragraph 4(f):
f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.
The Panelist quotes the rule however appears to have misapprehended it. He correctly quotes; “In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel”, which says that ‘if there are multiple disputes between YOU (i.e. one registrant) and a complainant, then either party can petition to consolidate the disputes’. Clearly this provision envisions the consolidation of multiple disputes where those disputes are between the Complainant and a single Respondent. This is confirmed by Rule 3(c) which states:
“The Complainant may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”.
Accordingly, and as pointed out in Gerald Levine’s Domain Name Arbitration at Page 518, “the phrase ‘same domain name holder’ has been construed liberally to include registrants who are not the same person but circumstances suggest the domain names are controlled by a single person, entity or related entities. In the present case, there were clearly more than a single domain name holder and as such it was not open to the Panelist to consolidate the proceeding against multiple domain name holders.
There are many panelists who have dealt with consolidation issues, and there are a wealth of decisions on that score. Having represented respondents who have been lumped in with unrelated parties, I have never encountered a panel or a provider who would allow a case to go forward against multiple respondents who have identified themselves as separate parties. Again, while a panelist might make all sorts of reasonable inferences if no one shows up, the situation is different when separate respondents do actually show up in some way.
Trademark Rights
One of the fun things about UDRP cases is that it is hard to resist, upon just seeing the domain name(s) being contested, setting some early expectations of what one will expect to see proven, or not, by the complainant.
If the domain name is “DanskoShoesUK.com” then we already know who brought the case and what the probable outcome will be. It takes as long to decide that dispute as it does to read the domain name.
But when the domain name is “DogAndCatsShots.com”, you might think, “hmmm… does this have anything to do with veterinary services? And if so, will the complainant show acquired distinctiveness in this primarily descriptive term?”
Sure, enough, the Complainant is “Yolano Veterinary Clinic” thus answering the first question. Now, a veterinary clinic claiming exclusive rights in “dog and cat shots” is, to any trademark professional, something that should raise an eyebrow in the expectation of a strong showing of acquired secondary meaning or, mercifully, a registered mark of some kind thus relieving the panelist of that chore.
In the present case however, the Panelist appears not to have taken note of this issue. All he says is:
“The Complainant Dr. Geoffrey Antipa, dba Yolano County Vet as a general partnership in California, the owner and user of the registered domain name www.dogandcatshots.com, and provides pet vaccination services, among other pet health products.”
Okay, so the Complainant provides pet vaccination services, of which “dog and cat shots” is riding the line between descriptive and generic. The proof of distinctiveness had better be good:
“Dr. Antipa has been using this specific domain name since it was first registered in June 2015.”
So, he’s only been online for 8 years, which is not a lot, relatively speaking and particularly when it comes to acquiring distinctiveness in an otherwise descriptive or generic phrase. Nevertheless;
“Dr. Antipa and his family have been operating this business in California since 1978 as stated on his website and his registered trademark, thus having common law intellectual property rights through their exclusive use, in addition to their California registered trademark.”
By “this business” we are left to wonder whether that means “Dog and Cat Shots” or “Yolano County Vet”. Then, there are two references to a “registered trademark”. Having checked, I found there is no US federal registered mark, and so the only “registered trademark” is the California state one. The subject of US state registered trademarks is discussed extensively in many UDRP decisions rejecting their use as evidence of rights and is also discussed in Digest Volume 2.31 in connection with the alleged Florida state trademark for Tampa Water Taxi. The Panelist in the present case does not appear to have determined whether this state trademark qualifies as a mark under the Policy despite numerous cases on this topic. He simply suggests that because a business uses “Dog and Cat Shots” in some unspecified way, then it is a “trademark”, which does not even consider the requirement for more than mere use to reach acquired distinctiveness, particularly when it comes to descriptive or generic terms. This is another issue which was covered in Digest Volume 3.17 and also in Digest Volume 2.21 where it was noted that. “When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue”.
Incidentally, while the Complainant does get a lot of Google relevance as of 2023 for this term, they are by no means the only vet clinic that advertises “dog and cat shots”. That should really come as no surprise. I looked up that California registration. It was filed in 2022 for:
“A stylized pink dog bone with an image of a dog head in the upper left curvature of the bone and a cat head in the upper right curvature of the bone, both facing inwards, with text between both images stating “Dog and Cat Shots”. Both images and that text are just above text reading “By Yolano Vet” with that text just above the website url reading “www. DogAndCatShots.com.”
The mark, California Reg. No. 02023590 filed in 2022 looks like this:
Now, the Panelist apparently takes that as evidence that the business was “using the mark” since 1978, because their certificate says “Since 1978” on it, despite the fact that this is obviously far earlier than domain name were invented. Furthermore, the state registration document, which was filed in 2022, claims use of that entire logo since 2015, not 1978. But even though, like other states, California merely accepts trademark applications as-filed, the California registration includes a disclaimer of both “Yolano Vet” and “www. DogAndCatShots.com“:
Accordingly, the only evidence that the Complainant has, is a state trademark registration that is junior to all of the disputed domain names, and which that DISCLAIMS the phrase at issue, yet nevertheless the Panelist found “DogAndCatShots .com” to be a trademark based on a state trademark registration disclaiming it.
This troubling decision demonstrates the absolute imperative of UDRP Panelists being familiar with both UDRP jurisprudence and trademarks. While UDRP cases can be very fact-specific, and UDRP Panelists are not bound by a formal system of precedent, one would expect at least some sort of explanation when a UDRP Panelist deviates in a substantial way from the overwhelming majority trend, or applies a novel theory. After all, there are tens of thousands of UDRP decisions, so there are issues which have been encountered many times, such as consolidation of parties and US state trademark registrations. One might not agree with the majority position on an issue, but at least a relatively consistent application of a disliked principle renders outcomes predictable enough for lawyers to counsel their trademark or domain name clients.
Steve Levy comments on the issues of the conjunctive bad faith requirement and adequate evidence raised in the decision on <caravana .com>
Special Guest Case Comment by Steven M. Levy: Steve Levy focuses on trademark domain name disputes and has personally researched, drafted, and filed over 600 domain name complaints. Steve serves as a Panelist at Forum and CIIDRC, accredited UDRP dispute resolution providers. He is a frequent speaker on the topic of domain name disputes and is eager to encourage greater awareness of, and participation in this field by stakeholders and practitioners. Prior to his current roles, Mr. Levy led the global intellectual property practice team at the Home Depot, was an associate at the New York office of the Proskauer law firm, and was in-house counsel to Sony Corporation based in Tokyo, Japan.
Two of the most often overlooked requirements of any UDRP complaint are that the complainant demonstrate trademark rights that predate the respondent’s acquisition of the disputed domain name (due to use of the word “and” in the bad faith registration and use requirement of par. 4(a)(iii)), and that claims be supported with sufficient evidence.
Practitioners who are unfamiliar with the UDRP frequently overlook or don’t understand the meaning of the conjunctive bad faith registration “and” use standard and its implication that bad faith registration or acquisition of a domain name (i.e., targeting of the complainant’s mark) is simply not possible at a time before the trademark even exists. The UDRP is not like seeking injunctive relief in a courtroom and so it may be counter-intuitive to some that no matter how strongly the current use of a domain shows bad faith, the fact that it may not have also been registered in bad faith results in a doomed case. Further, the Complainant in this case didn’t understand that the bad faith registration requirement of par. 4(a)(iii) has been interpreted, not only to apply to the original creator of a domain name, but also to a respondent who acquired the domain name more recently – often considered a new “registration”.
The second element mentioned above, adequate evidence, is also often lacking in UDRP cases. While it’s true that this venue does not have as strict evidentiary standards as a courtroom or all of the tools such as depositions, witness testimony, cross-examination, etc., the parties must still support their case with something beyond a simple textual claim or assertion. In this case, it was critical to review and submit into evidence archived Whois (ownership) records in an effort to show that the current Respondent may have registered or acquired the domain name after the Complainant’s CARVANA trademark came into existence and thus may have actually targeted the mark in bad faith. Of course, the rise in use of Whois privacy services and nondisclosure by registrars has hampered this effort so it may not be an easy task.
In the end, the Panel was rather generous in denying the claim without prejudice to a refiled complaint attended by the evidence necessary to support a claim of bad faith. It will be interesting to see whether Complainant takes up this challenge.
Ankur Raheja comments on the issue of ceasing to make commercial use of a registered trademark in the relevant jurisdiction raised in the decision on <savefromus .com>
ULIONA LIMITED v. Mohd Amaan, NAF Claim Number: FA2305002043284, (UDRP Digest Vol. 3.25).
Case Comment by Newsletter Editor, Ankur Raheja:
In case Complainant’s website <savefrom .net> is visited from the US, where the Complainant owns registered rights, a visitor is redirected to the sub-domain https://us.savefrom.net, with the following message on the screen:
That is, while the Complainant in this matter is relying upon a US trademark to assert its rights under the UDRP, however, the Complainant has ceased offering services in the US since 2020. This raises an interesting question as to whether the Complainant violated its closing certification to provide a complete and accurate statement to the Panel of having ceased the use of the registered mark (Paragraph 3(b)(xiii) of the Rules).
Beyond that troubling issue which renders the Complainant’s relied upon registration arguably suspect, it may very well be that the Complainant could have established common law trademark rights in the term. Moreover, it does seem rather unlikely that the Respondent adopted such a similar brand to the Complainant’s rather arbitrary brand for essentially the same service The Panel takes a highly critical view of the Response filed by a self-represented Respondent, stating that,“this Panel considers it a real an insult to intelligence” and “stating that SAVEFROMUS is a generic word is only a phrase with no evidentiary support”. Just because the Respondent claimed that “This domain consists of a generic word, for its inherent meaning, which aligns with the site’s purpose and motto of encouraging online users to ‘save their content from us”, does not make its argument have any sense or credibility and the Panelist properly found so in this case.
Nat Cohen discusses the issues of applying the passive holding doctrine in the absence of a response and limited panel research raised by the decision on <terravita .shop>
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
While most disputes are undefended, that usually poses little problem for a Panel as the Disputed Domain Name is often put to an obvious bad faith use or it is often the typosquat of a famous, distinctive mark.
Yet when a Complainant asserts the passive holding doctrine and there is no response, as in the Terravita .shop dispute, a Panel is placed in a potentially difficult situation. The Disputed Domain Name is not put to any use that could guide the Panel and the asserted mark is not highly distinctive, such that in the absence of a response the Panel may not have enough information to make a well-informed decision. The Complainant is unlikely to include evidence that rebuts its allegations. The Panel’s own base of knowledge may be insufficient to assess the plausibility of the Complainant’s allegations. What is a Panel to do under these circumstances?
The passive holding doctrine, as set forth initially in the seminal and oft-cited Telstra decision from 2000, enumerates several factors to be assessed in determining whether “non-use” can be considered “bad faith use” for the purpose of the Policy. As noted by the Panel in the Terravita .shop dispute, section 3.3 of the WIPO Overview describes the factors as:
(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Factor (iv) is particularly challenging to evaluate in the absence of a response. Demonstrating the “implausibility of any good faith use to which the domain name may be put” requires proving a negative. A competent response would include evidence of widespread third-party use of the mark, if such evidence existed, to undercut both the Complainant’s allegations that its mark is distinctive and that there is no plausible good faith use to which the domain name may be put.
Yet when there is no response, how is a panel to know whether the mark is subject to extensive third-party use? And in the absence of knowledge of the prevalence of third-party use of the mark, how is a panel able to fulfill its responsibility under the passive holding doctrine to assess “the implausibility of any good faith use”?
As I argued in my comment on the fbsolution .info dispute, the correct approach cannot be that plausibility is determined by “a Panel searching its own mind”. In other words, when a complainant makes such an allegation but does not provide adequate evidentiary support regarding third-party use, or the lack thereof, and in the absence of a response, it is not sufficient for a panel to determine the matter by saying, in effect, since I personally am not aware of third-party usage of this term, my own lack of awareness is sufficient evidence to make a finding that there is no plausible good faith use for the disputed domain name.
I believe that there are four better alternatives available to a Panel when it seeks to assess the implausibility of a good faith use of the Disputed Domain Name.
First, if the Complainant provides sufficient evidence such that the Panel believes it can assess the implausibility of a good faith use based on the Complainant’s evidence alone, this would be the ideal option. The type of evidence that a Complainant could submit to support an “implausibility” allegation could include search results of the WIPO Global and USPTO trademark databases that reveal that it is the only mark holder, the first 100 Google search results obtained from locations far removed from the Complainant’s base (as Google search results are geo-targeted and which can be accomplished through the use of VPNs) showing that the Complainant dominates those search results, LinkedIn searches on the mark showing that the Complainant is the only company known by that name, DotDB.com searches on the mark which reveal all registered domain names based on that mark, with screenshots of the webpages of each domain name to demonstrate that there is no legitimate third-party use being made of the mark.
If a Complainant provided such thorough evidentiary support of its allegation that there is no plausible good faith use of the Disputed Domain Name, then the Panel could determine that it had sufficient evidence available to it to fulfill its responsibility to assess the implausibility of good faith use of the Disputed Domain Name.
Yet the likelihood that a Complainant will go to such lengths are “slim to none, and Slim has left town”. Complainants might start providing robust search results that demonstrate the frequency of third-party use of their marks if Panels start requiring Complainants to take seriously their responsibility to support their allegations of the implausibility of good faith use with adequate evidence. Yet as slap-dash, poorly supported complaints are more the norm than robust complaints, a Panel is unlikely to receive a complaint that includes adequate evidence that a Panel could rely upon to decide the implausibility of a good faith use.
In the absence of a Complainant including sufficient evidence to support the allegation of implausibility of a good faith use, the Panel has a Second option available to it – to conduct independent research to assess the validity of the allegation. This is a problematic approach, as it is not the Panel’s job to conduct research to make a case that either the Complainant or the Respondent should have made for themselves. This is especially problematic if a Panel conducts research that determines the outcome of the dispute and does not provide the parties the opportunity to respond. Disagreements about the extent of acceptable independent research notably surfaced in last year’s fordirect .com dispute.
It is impossible to know how frequently Panels engage in independent research since there is no tally of such decisions. Searching UDRP.tools for phrases that commonly appear in decisions when independent research is conducted yields the following results:
“limited factual research” – 625 instances
“independent research” – 337 instances
“Panel searched” – 36 instances
These results suggest that independent research undertaken by panelists is not an infrequent occurrence.
As I noted in my fbsolution .info comment, in less than five minutes, a Panel could conduct searches on the asserted mark on Google, LinkedIn, DotDB.com and in relevant trademark databases to determine the extent of third-party use and therefore the plausibility that the Disputed Domain Name could be put to a good faith use. This independent research would also enable the Panel to verify whether the Complainant is compliant with its certification that “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate”, or whether the Complainant has cherry picked its evidence and is in violation of its certification.
A Third option is for the Panel to issue a Procedural Order requesting more evidence about the implausibility of good faith use. This solicitation of evidence raises similar concerns of Panel activism as are raised by independent Panel research. Especially in the absence of a response, it could be viewed as a Panel assisting the Complainant in fixing defects in its complaint. It can also create complications as in the hclsoftware .com dispute, where the Respondent defaulted but then filed a full response after the response deadline when the Panel issued a Procedural Order and then invited the parties to respond.
For many of the reasons offered by Zak Muscovitch in his comment above, rather than issue a Procedural Order, it may be preferable for the Panel to choose a Fourth option of denying the complaint, either with prejudice or without prejudice. If the denial is without prejudice, it offers the Complainant an opportunity to refile the complaint with more robust evidentiary support for its allegations.
Another important consideration is what inference a Panel should draw from the Respondent’s failure to respond. This raises a recurring, fundamental, and vexing problem of whether, if the Complainant makes a plausible allegation supported by at least some evidence, the evidentiary burden shifts to the non-appearing Respondent such that the Complainant then prevails by default.
I would attempt to frame the question rather simply as “Does the Complainant have a lower burden of proof when the Respondent fails to appear?” If a Panel is inclined to answer “yes”, then the Panel could take a view that, for instance, once the evidence supports a 25% probability that the Complainant’s allegations are correct, this creates a rebuttable presumption in favor of the Complainant such that the burden then shifts to the Respondent to rebut that presumption.
When a Panel makes a rebuttable presumption based on evidence that is insufficient to meet the balance of probabilities standard, and there is no response, the consequence is that the Panel then orders a transfer based on woefully inadequate evidence. This is what led to the recent unfortunate decision to transfer the aku .com domain name. Indeed, as succinctly stated by Zak Muscovitch in his comment on the aku .com dispute:
The lesson to be learned from this case is that Panelists must maintain the onus on the Complainant to make its case via evidence and not rely on the absence of a Response to “rebut” an insufficient case.
The perils of a Panel issuing a decision as to the plausibility of good faith use without requiring the Complainant to support such an allegation with sufficient evidence is again seen in the centerfolds.com dispute from 2018 brought by Playboy Enterprises. The Panel relied on Telstra to justify the transfer of the domain name. Yet even though the term “centerfolds” was coined by Playboy, it has since entered mainstream use with numerous nightclubs across the United States that are not affiliated with Playboy incorporating “centerfolds” in their names, and numerous magazines offering centerfolds. It is a dictionary word, and appears in multiple Wikipedia entries.
If Playboy Enterprises had been required to provide a page of Google results to support its allegation of the implausibility of a good faith use of the term “centerfold”, if the search looks anything like the search I just conducted, the results demonstrate just the opposite, with dozens of results unrelated to Playboy Enterprises, and, surprisingly, Playboy Enterprises not appearing anywhere in the top results. Alternatively, if the Panel had conducted its own quick limited factual research, it would presumably have encountered similar search results. Yet the Panel in the centerfolds.com dispute chose to issue a transfer order without the sufficient evidence required to make an accurate determination as to the plausibility of a good faith use for the domain name. Indeed, a five second search on Google would have been sufficient to demonstrate the falsity of the Panel’s finding.
In the Terravita .shop dispute, the French Complainant relied upon the doctrine of passive holding and the Swiss Respondent did not appear. The Panel could have found that there was sufficient evidence to support a rebuttable presumption that the Respondent, despite the lack of use of the Disputed Domain Name, could make no legitimate use of the domain name and had targeted the Complainant in bad faith, given their geographic proximity, that the Complainant’s marks predated the registration of the Disputed Domain Name, and that “TERRAVITA” is not a dictionary word, but a coined term. Perhaps, as well, the Panel was aware of the Complainant but of no other third-party use.
Yet the Panel in this dispute, instead, chose to make its decision based not on rebuttable presumptions or speculative inferences, but based on evidence. He had a hint as to the plausibility of a third-party use since the location reported for the Respondent is Terra Vita, Switzerland. The Panel chose to conduct limited independent research. He quickly found numerous instances of third-party use, including an Arizona development named Terra Vita which uses the terravita.com domain name. As stated on that website:
The name “Terravita” is a combination of two Latin words: “terra”, meaning earth or land, and “vita” meaning life. Living in harmony with the land is what Terravita is all about.
The Panel avoided making an unjust transfer by ensuring that its decision was based on evidence, not speculation. As stated by the Panel, the evidentiary burden remains on the Complainant:
Given that the onus is on the Complainant to prove its case on balance of probabilities regardless of the Respondent’s default,
The quality of UDRP decisions would be improved, and the frequency of unjust transfers would be reduced, if fewer Panels adopted the practice of treating a default as an excuse to disregard the requirement that a Complainant provide sufficient evidence to prove its case to a balance of probabilities standard. As here, when a Respondent defaults, the burden remains squarely on the Complainant to produce sufficient evidence to adequately support its allegations.
I’m indebted to Steven Levy, Paul Keating, Richard Hill, Zak Muscovitch, Igor Motsnyi and Gerald Levine, among others, for sharing their views on the passive holding doctrine.
We hope that you enjoyed this review of commentary from past issues of the UDRP Digest