July 1, 2016
World Trademark Review
Authored by Douglas A. Rettew and Jonathan Uffelman
The Uniform Domain Name Dispute Resolution Policy (UDRP) is designed to address cases of abusive domain name registration and use. To prevail, a complainant must prove all of the following elements:
Although considered separately, the analysis of these elements is often interwoven.
Since 1999, approximately 88% of all cases decided at the two most frequently used UDRP arbitration forums–the World Intellectual Property Organisation and the National Arbitration Forum–have resulted in the transfer or cancellation of the domain name(s) at issue. Because so many cybersquatters operate in secrecy, domain name registrants often do not contest a UDRP complaint filed against them.
However, a default by the domain name registrant does not result in an automatic win for the complainant. UDRP panellists will analyse the merits of the complaint, even if no response is filed (although a panellist may draw appropriate inferences from the registrant's failure to respond). In cases where a domain name holder does respond, the odds of winning almost balance out statistically. Further, in cases that do not involve clear fraud or phishing, what appears to be abusive registration and use to one panellist may appear acceptable to another. A review of UDRP decisions shows that exceptions may be found to almost any rule.
Accordingly, before filing a complaint, trademark owners must carefully analyse the facts of their case and ensure that they back up their assertions with sufficient evidence. This article provides an overview of common issues that trademark holders should consider when preparing a UDRP complaint.
Under Section 4(a)(i) of the UDRP, a complainant must establish both that it has rights in a valid trademark and that the disputed domain name is confusingly similar to it. Not only do trademark rights establish a complainant's standing to bring a case (a UDRP panel will not consider any other element if rights are not established), but the strength or weakness of the asserted mark will also factor into the panel's analysis of the registrant's rights and bad faith, and so may determine the outcome of the proceeding.
The burden of establishing rights in a common law trademark is higher than that for registered marks. If a complainant fails to submit evidence of secondary meaning, the complaint may be dismissed. Such evidence may include:
Additionally, when relying on a common law trademark, complainants should consider whether the registrant operates in a separate geographic market. If so, a panel may find that the registrant has the right to use the domain in that market.
A complainant relying on a registered trademark need only provide a copy of the registration certificate from any jurisdiction to establish its rights. If the complainant owns a registered mark in the jurisdiction where the registrant resides, it should provide evidence of this. Where possible, complainants should submit evidence of secondary meaning as well, to strengthen the argument that the registrant registered the domain with the complainant's mark in mind.
Trademarks with disclaimed elements should be scrutinised carefully. If what has been disclaimed leaves little that could be considered confusingly similar to the disputed domain name, a complainant is unlikely to overcome the policy's first prong. For example, a panel refused to transfer the domain name 'religionnewsservice.com' to the owner of the RNS RELIGION NEWS SERVICE design mark because the phrase 'religion news service' had been disclaimed. The fact that the complainant had also registered the phrase RELIGION NEWS SERVICE on the Supplemental Register was insufficient because it did not, by itself, prove that the phrase had acquired distinctiveness.
If the asserted mark has any arguable geographic significance or incorporates a geographic term, complainants should provide sufficient evidence that the mark functions as a source indicator. If the registrant uses a domain in a way that relates solely to the geographic significance of the mark, the complaint may fail. For example, a UDRP panel refused to transfer the domain name 'wifi-paris.com' to the City of Paris because while the city had registered the trademark PARIS AND DESIGN, it could not show that it owned trademark rights to the geographic term 'Paris' by itself.
Marks composed of descriptive or generic dictionary terms may face challenges on all three policy elements. Some panels have found that differences of just one letter are sufficient to overcome a finding of confusing similarity–the domain name 'tirediscounter.com' was found not confusingly similar to the TIREDISCOUNTERS trademark. And if such a domain name describes the registrant's website content, a panel may find that the registrant has a legitimate interest in the domain under the fair use defence or that the registrant is not using it in bad faith. A UDRP panel refused to transfer the domain name 'publicstoragephoenix.com' to the owner of the PUBLIC STORAGE mark because the respondent used the domain descriptively to provide information about storage available to Phoenix residents.
Similarly, if the mark is an acronym or is composed of random letters, multiple third parties might legitimately claim its use. In such cases, as with descriptive trademarks, complainants should perform trademark and Google searches to determine the extent to which third parties use the same or similar terms. The more third-party use, the greater the burden on the complainant to prove that the domain name was registered and used with the specific trademark in mind. For example, a UDRP panel refused to transfer the domain name 'mps.mobi' to the owner of the registered MPS mark, noting that MPS is a common three-letter acronym used by many third parties for a variety of services and because no other evidence of bad faith existed. By contrast, the panel transferred the domain name 'ehf.com' to the owner of the EHF mark, despite the registrant's argument that EHF is a generic abbreviation, because the complainant established that the registrant had targeted the trademark. Specifically, it found that:
In most cases, it is fairly straightforward to establish confusing similarity and few cases are dismissed on this ground alone. The analysis should focus on a comparison between the complainant's mark and the domain name in question only. Generally, as the mark's distinctiveness increases, so too must the differences between the mark and the domain name in order for the respondent to prevail.
UDRP panels agree that the mere addition of descriptive, geographic or generic terms to a trademark generally will not mitigate confusing similarity. In fact, such additions may enhance the potential for consumer confusion if the added terms relate to the goods or service offered under the complainant's mark. For example, the addition of the generic word 'credit' to the BLACKSTONE mark in the domain 'blackstonecredit.com' enhanced the confusing similarity, because the mark identified the complainant's financial services.
Similarly, misspellings or letter/numeric/phonetic substitutions, also called typosquatting, do not mitigate confusing similarity. Typosquatting may also serve as a basis for finding a registrant's bad faith and lack of legitimate interests; such was the case where the domain 'sh0pbop.com' was found to be confusingly similar to the SHOPBOP mark and 'tumhler.com' was found to be confusingly similar to the TUMBLR mark. On the other hand, if the misspelling invokes a different connotation, the panel may not find confusing similarity. For instance, a panel found that 'njtranshit.com' was not confusingly similar to the NJTRASIT.COM mark.
UDRP panels generally do not consider generic top-level domain (gTLD) extensions when analysing confusing similarity. However, many of the new gTLDs may alter this analysis. Some panelists have held that these extensions may be considered where they relate to the goods or services associated with the complainant's trademark. One panel found that the gTLD '.scot' in the domain name 'drambuie.scot' conveyed an association with Scotland, which enhanced the confusing similarity with the DRAMBUIE trademark for Scotch whisky. On the other hand, new gTLD extensions such as '.sucks' and '.gripe' have been deemed not confusingly similar because of their obvious pejorative meaning.
Of the three, this element is the most uncertain for a complainant because it rarely knows what evidence exists to prove a registrant's right to use a domain, except where fair use may be a factor. Therefore, the complainant's burden is simply to make a prima facie showing that the registrant has no rights or legitimate interests in the domain name. The burden then shifts to the registrant and the UDRP provides a non-exhaustive list of three circumstances which prove a registrant's rights or legitimate interests in a domain name:
To mitigate the uncertainty of this element, complainants should thoroughly research the domain name, its use and the domain name registrant to identify any available facts that might defeat or strengthen their claim.
Section 4(c)(i) has three components which may be relevant:
A registrant is deemed to have notice of the dispute the moment it has actual notice–either through the UDRP complaint or through prior communications. Constructive notice–mere registration of a trademark, for example–is insufficient. However, if a registrant puts up a website unrelated to the complainant's mark only after receiving the complainant's demand letter, a panel may view this as a smokescreen for an abusive registration.
Typically, a bona fide offering refers to goods or services unrelated to those offered by the complainant. Any use that shows an intention to trade on the complainant's fame or reputation in the marketplace is not bona fide. Numerous panels have found that registrants have no rights or legitimate interests in domain names which resolve to pay-per-click sites with links to a complainant's or its competitor's services.
However, determining whether a registrant is using the domain for a bona fide offering may depend on the strength of the mark and other evidence of bad faith. Target Brands, Inc argued that 'target.org' was not used for a bona fide offering because it resolved to a pay-per-click site showing links to products, such as those offered in Target stores. However, the panel held that Target did not have a monopoly on the generic word 'target' and the product links in question related to target practice, hunting, archery and other sports equipment. Target failed to provide any evidence of bad faith. Similarly, a panel refused to transfer the domains 'acethepraxis.com,' 'gre-secrets.com' and other standardised test-related domains to the owner of the PRAXIS and GRE marks because the respondent had conducted a legitimate business selling test preparation materials long before he received notice of the dispute, and because his use was a fair, nominative use of the complainant's marks.
A registrant that claims to be preparing to use the domain for a bona fide offering of goods or services must provide demonstrable evidence of those preparations. Bare assertions of plans will typically be rejected and a plan that would interfere with the complainant's business is not bona fide.
A registrant is commonly known by the domain name when its personal or business name is the same or similar to the domain name. This is determined by both the domain's use and the registrant's history.
Research should begin with the domain's WHOIS record, at https://whois.icann.org/en. If the domain reflects the registrant's personal or business name, complainants should investigate whether that name is legitimate. Registration of a domain using demonstrably false information supports a finding of bad faith. Similarly, if the registrant uses a privacy or proxy service to conceal its actual name, this may also support a bad-faith finding. If, on the other hand, the registrant's personal or business name appears legitimate, the relevant question may turn on the domain name's use. For business names, close proximity of services and geographic location may strengthen a complainant's claim and vice versa. However, a registrant has no right to use a domain that, though incorporating a personal name, interferes with the complainant's mark.
Similarly, if the registrant owns a rival trademark in another jurisdiction, this will be compelling evidence of its right to use the domain name–although it may not be conclusive. A panel transferred 'madonna.com' to the singer Madonna, even though the registrant owned a registered MADONNA mark in Tunisia. The panel found that the registrant's trademark had not been acquired in good faith because the registrant was not located in Tunisia and admitted that he had obtained the registration merely to protect his interests in the domain name.
Fair use can be found where a domain name, although confusingly similar to a trademark, is nonetheless used nominatively or descriptively for the registrant's goods or services. This can include non-commercial criticism or fan sites.
With regard to these, two lines of cases have emerged, introducing an additional layer of uncertainty to a complainant's claim. Generally, the differing views result from the fact that the United States holds a more expansive view of freedom of speech than the rest of the world. Therefore, when crafting an argument, complainants should consider both where the respondent is located and in what jurisdiction an appeal of the panel's decision may be brought.
For non-commercial criticism sites, one line of cases holds that the right to criticise does not extend to registering a domain name which is confusingly similar to a trademark. The other holds that a registrant has a legitimate interest in using a trademark as part of the domain name of a criticism site if the use is fair. Although results are not uniform, in cases where the parties are both from the United States or the selection of mutual jurisdiction for appeal is in the United States, panellists tend to take the second approach. Some panellists consider additional factors, such as whether:
A similar analysis applies to non-commercial fan sites. One line of cases holds that the registrant of an active fan site may have rights in a domain name which includes a complainant's mark–the site should be clearly distinctive from the complainant's official site. The second line of cases holds that a registrant does not have rights in expressing even positive views on an individual or an entity by using a confusingly similar domain name if the registrant intentionally misrepresents an affiliation with the individual or entity. Some panels which follow this second view also note that if the domain is identical to the trademark, the respondent has prevented the complainant from exercising its rights on the Internet and managing its online presence.
Panels routinely dismiss complaints where the registrant's domain name registration pre-dates the complainant's acquisition of trademark rights. This circumstance is also among the most common reasons that panels find reverse domain name hijacking.
In such cases, a complainant must investigate further to determine whether the current registrant is the original one. If so, and the registrant's use of the domain has been consistent, a complainant may be unable to establish bad-faith registration because the registrant could not possibly have targeted the trademark when registering the domain. Most panels hold that a registrant's renewal of a domain name does not qualify as a new registration. However, if there is evidence that the registrant somehow knew of the complainant's intent to register a mark and acquired the domain name beforehand to capitalise on it, bad faith may be found.
If, on the other hand, the domain's creation pre-dates the trademark, but the domain has changed hands since the trademark was acquired, complainants should research whether the two owners are related. If no connection can be found, the panel will focus on the new registrant's motivation for acquiring the domain name and bad faith may be found.
Section 4(b) of the UDRP provides the following non-exhaustive list of examples of bad-faith registration and use:
The first three subparagraphs focus on the purpose of the registrant's registration, while the fourth focuses on the registrant's use. Many panels hold that complainants must prove both bad-faith registration and use. That said, some conduct may evidence bad faith under more than one subparagraph of Section 4(b).
Section 4(b)(i) encompasses all forms of solicitation–from using the domain as leverage in settling a separate dispute to general offers to the public to specific offers to rights holders at inflated prices. When comparing a registrant's asked-for price against its documented out-of-pocket costs, panels generally consider only costs related to acquiring and keeping the domain name registered and not those related to the creation or maintenance of the connected website.
Crucially, the UDRP does not prohibit the sale of domain names for market value to arm's length purchasers. Therefore, any evidence of a registrant's offer to sell should be weighed against the distinctiveness of a complainant's mark, as well as other evidence of bad faith. The more famous the mark, the more easily a panel may infer that a registrant's offer to sell intentionally targets the value and goodwill of the complainant's mark. However, selling domains which incorporate descriptive terms in widespread use may be ruled bona fide. In such cases a mere offer to sell, without more, may be insufficient to prove a registrant's bad faith.
Without direct solicitations from the registrant, the first place to find such evidence is the domain's WHOIS record in the database at www.domaintools.com. These records will often reflect that the registrant is selling the domain name and sometimes even list an asking price.
Contacting the registrant and offering to purchase a problematic domain name has potential upsides, but may also cause problems in a UDRP proceeding. If the registrant is cooperative, the rights holder may acquire the domain for a relatively low cost. However, if the registrant refuses to sell, then it may be difficult to prove that its primary purpose in registering the domain was to sell it to the rights holder. Moreover, if a complainant fails to mention its unsolicited offer to purchase the domain when asserting that the registrant offered to sell it, panels have held that this is a misrepresentation of a material issue which warrants a finding of reverse domain name hijacking.
Under Section 4(b)(ii), complainants commonly demonstrate a registrant's pattern of conduct by supplying evidence that it:
Complainants should first consult the WHOIS database at www.domaintools.com. If the registrant has not used a privacy or proxy service to conceal its identity, the WHOIS record will indicate how many other domain names it has registered. If the registrant has registered hundreds of domain names, the complainant should consider purchasing a reverse WHOIS record to determine how many of those registrations reflect its, or other owners', trademarks.
Researching the registrant's history in UDRP proceedings and district court litigations filed under the Anti-cybersquatting Consumer Protection Act may yield a variety of useful information. First, prior adverse UDRP decisions against the registrant will be compelling evidence of a registrant's pattern of conduct. Those whose business is to register and resell domain names may operate under various organisational names–which can be to hide their identity. UDRP proceedings may have been initiated against different entities which are, in fact, run by the same registrant; so gaining as complete a picture as possible of the registrant's activities is important. Second, such research may help to evaluate risk. As noted earlier, statistics show that in UDRP proceedings where registrants default, complainants' success rate is higher than where registrants file a response. Similarly, if a registrant has had mixed success in previous actions, panels may not weigh prior adverse decisions against the registrant as heavily. Third, if the registrant has a history of challenging adverse UDRP rulings in federal court, complainants must evaluate their tolerance for potentially protracted litigation.
Under Section 4(b)(iii), disruption is typically found where the registrant's conduct is directed at the same market as the complainant's. Actual disruption or interference with a complainant's business need not be shown; only evidence that allows the panel to infer that disruption was the registrant's primary purpose in registering the domain name. For example, typosquatting has been found to constitute evidence of bad faith under this section.
Pay-per-click sites, discussed above, may violate both Sections 4(b)(iii) and (iv). Even if the registrant has not populated the website itself, registrants are generally held responsible for how their domain names are used. That said, if the only evidence of bad faith is a pay-per-click website and other factors suggest that the registrant did not specifically target the trademark when registering the domain name (eg, where the links correspond to the generic/descriptive words in the domain or the registrant can demonstrate plans for an unrelated website), some panels may not find bad faith.
Similarly, passive or intermittent use of a domain name may result in a bad-faith finding under Sections 4(b)(i), (ii), and (iii). However, if this is the only evidence of bad faith, complainants should carefully evaluate all the circumstances. The asserted trademark's strength and fame will be important, as will any credible evidence provided by the registrant of intended legitimate use. For example, one panel refused to transfer 'audicity.com' to Audi AG where the registrant's use of the domain had been intermittent. Although the AUDI mark preceded the domain's registration, the domain preceded Audi's use of the term 'Audi City' by 11 years. The registrant had not registered other domain names that targeted trademarks, and over the course of 11 years the website variously contained only photos of San Francisco, the registrant, an electric guitar, and a blank page–none of which was for commercial gain. The registrant claimed that he had chosen the domain name as a play on the words 'audacity' and 'audio.' Ultimately, the panel found this explanation more credible than the complainant's suggestion that the registrant chose the domain anticipating it would have some value to Audi 11 years after its registration.
Under Section 4(b)(iv), 'commercial gain' has been construed broadly to include just about anyone that may benefit financially from a website. Thus, if the domain is parked and the registrar, rather than the registrant, populates the page with links to sites related to the complainant's mark, the requirement may be met. 'Likelihood of confusion' refers to consumer confusion as to the source of goods or services, or affiliation with the website. The more distinctive the mark, the more likely consumer confusion.
In addition to pay-per-click sites discussed above, phishing may violate both Sections 4(b)(iii) and (iv). Phishing includes using fraudulent websites, pop-ups, emails and other devices which create a false impression of legitimacy in order to extract users' personal or financial information. Domains which redirect users to a website offering the user the opportunity to take a brief survey in exchange for prizes have also been found to constitute a phishing scheme.
Linking a domain to a pornography site may be a bona fide offering of services under Policy 4(c)(i). However, if the evidence suggests that the registrant had the complainant or its trademark in mind when registering the domain name, bad faith may be found, even though the services offered are unrelated to the asserted mark.
Section (15)(e) of the UDRP provides two examples that suggest a complaint has been brought in bad faith and constitutes an abuse of the administrative proceeding: where the complaint was brought "in an attempt at reverse domain name hijacking" and where it was brought "primarily to harass the domain-name holder."
Typically, panels will not find reverse domain name hijacking except in clear cases. Often, if a complainant succeeds on even one of the three elements, panels will decline to find reverse domain name hijacking. Nor will panels fault a complainant for simply defending its trademarks or even bringing a weak claim.
Reverse domain name hijacking is typically reserved for cases where a complainant clearly should have known that it could not prevail. Common circumstances include where the complainant:
While a finding of reverse domain name hijacking will not result in any damages in the UDRP proceeding itself, it may elsewhere. The Anti-cybersquatting Consumer Protection Act allows a registrant which has been unsuccessful in a UDRP proceeding to challenge the panel's decision in federal court and seek an injunction preventing transfer of a domain to the UDRP complainant. There, a complainant's knowing and material misrepresentations in a UDRP may create a cause of action for damages, costs and attorneys' fees under the act. While a finding of reverse domain name hijacking is not necessary for such a lawsuit to be filed, such a finding may encourage a registrant to file one. In one case, a registrant lost a UDRP and brought an action under the Anti-cybersquatting Consumer Protection Act to reverse the panellist's decision. The trademark owner defaulted and the district court awarded the registrant over $100,000 in damages and costs.
Originally printed in World Trademark Review on July 1, 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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