Protecting Trademarks and Domain Names with Arbitration and UDRP

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1 Protecting Trademarks and Domain Names with Arbitration and UDRP The UDRP Made Simple MARQUES

2 TODAY?

3 THE PLAN 1 Know what to do where there is an abusive registration of a domain name that incorporates your trade mark. 1 Know the resources and tools available to you. 1 Confidence to deal with the issues. It s not as painful and arduous a process as it may seem! You don t have to be a loser!

4 Scope Elements of Complaint/ Complaint template and filing guidelines Elements to be established by a Complainant Burden of proof Preparation - Things to bear in mind Language of the Proceeding

5 Complaint WIPO - Model complaint and filing guidelines Electronic filing to WIPO Arbitration and Mediation Centre - Word document or - Electric form: Word limit: 5000 words (para. 11, UDRP Rules) Check that the UDRP applies: Look into the Registration Agreement. Choose: Single-member or three-member panel ($) Mutual jurisdiction: Court jurisdiction at (i) location of the Registrar s principal office or (ii) location of Respondent per address shown in WhoIs database. (Paras. 1 and 3(b)(xiii), UDRP Rules)

6 Complainant Can there be several co-complainants? Yes when? complainants have a common grievance against the respondent; respondent engaged in common conduct affecting the complainants' rights; equitable and procedurally efficient. For Example (i) a licensee of the relevant trade mark, (ii) a related company, or (iii) complaint relies on a common source of trademark rights. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc. ( WIPO Case No. D ) and National Dial A Word Registry Pty Ltd and others v Directory Pty Ltd (WIPO Case No. DAU ) for principles for consolidation of multiple complainants.

7 Domain names Can there be multiple domain names? Yes provided that the domain names are registered by the same domain name holder (Para. 3(c), Rules) Panel to decide a request by a Party to consolidate multiple domain name disputes in accordance with Policy Rules. (Para.10(e), Rules) Panel s Mandate: Conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and Rules (Para.10 (a)) Ensure that Parties are treated with equality and that each is given a fair opportunity to present its case (Para.10 (b) ) Ensure that the administrative proceeding takes place with due expedition. (Extensions of time at request of a Party or on its own motion - in exceptional cases.)

8 Respondent Can there be multiple respondents? Yes when? Circumstances indicating that common control is being exercised over the disputed domain names or the websites. Circumstances indicating that respondents are related. Panel s consideration consolidation to be both procedurally efficient and fair and equitable to all parties. (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons WIPO Case No. D )

9 Language of the Proceeding Query #1 Where do I find it? Query #2: What if the language of the Registration Agreement is in a foreign language? (And often it is.) Panel s discretion -- having regard to the circumstances of the administrative proceeding (para. 11(a)) C can submit request that English be the language of the proceeding. Support request with: Earlier correspondence between the parties; Language of R s website(s); Any other evidence of R s familiarity with the English language. Otherwise: Translations of the Complaint and evidence should be submitted.

10 Substantive Requirements Para. 4(a), UDRP: (i) The domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. (ii) The Respondent has no rights or legitimate interests in respect of the domain name. (iii) The domain name has been registered and is being used in bad faith.

11 1 st Element Domain name identical or confusingly similar to a trade mark in which Complainant has rights What does C have to show? Show C has rights in a trade mark or service mark prior to domain name registration. Location of registration and goods/services covered are irrelevant for the purposes of the 1 st element to be established by C. Trademark registration not required but very helpful. Proceeding on basis of unregistered trademark rights - evidence of use required. Provide evidence of trademark registration rights Don t forget to add specimen copies of Certificates of Registration. Describe the manner in which the domain name is identical or confusingly similar to C s trade mark.

12 1 st Element identical/confusingly similar The test Straightforward visual and/or aural comparison between the trade mark and the domain name Trade mark recognizable within the domain name Addition of common, generic, dictionary, descriptive, or negative terms typically regarded as insufficient to prevent threshold Internet user confusion Disregard additions of hyphens or the top-level suffix (e.g..com or.net) Disregard content of R s website (if any). (See e.g. Wal-Mart Stores, Inc. v Traffic Yoon, WIPO Case No. D ; Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D ; A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgenson (WIPO Case No. D ).)

13 2 nd Element - Respondent has no rights or legitimate interests in domain name Burden of Proof C to prove each of the three elements are present (para. 4(a), UDRP). Failure of R to respond (default) does not automatically translate into victory for C. Query: How to prove a negative circumstance that R does not have rights or legitimate interests in a domain name? Panelists consensus view - Burden to establishing a prima facie case that R does not have rights or legitimate interests, after which burden shifts to R to proffer evidence that it has rights or legitimate interests in the domain name. Recommendation Put forward evidence why R has no rights or legitimate interest How? (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2 nd Edition.)

14 2 nd Element - Respondent has no rights or legitimate interests in domain name Argue (with evidence) one or all of the following: (i) R has not used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to R of the dispute; (ii) R has not been commonly known by the domain name, even if it has acquired no trademark or service mark rights; (iii) R is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. -- Derived from para. 4(c), UDRP - Non-exhaustive list of circumstances that may demonstrate when a Respondent has rights or legitimate interests in a domain name.

15 2 nd Element - Respondent has no rights or legitimate interests in domain name Things to bear in mind when preparing Complaint: Do your research the facts matter! - Does R have a trade mark registration(s)? If so, when was the mark registered? - Is R using the domain name? If so, how? Make sure you can show abuse/cybersquatting (underlying basis for the UDRP)

16 Don t presume facts or the strength of your case R may respond. Anticipate possible arguments. Properly prepare and present your case with relevant supporting materials. Supplemental filings may not be considered by the Panel. A refiling of a case (same C, same domain name(s)) is only accepted in very limited circumstances (change of ownership; new facts after the decision). File the Complaint as if a Response was already filed.

17 Look into chronology of events e.g. relevant in determining (i) (ii) whether trademark application filed or registration obtained by R is bona fide; if there was bad faith registration. How is R using the domain name? Is it used in relation to a field or products which competes with C? Is there a basis for a claim that R should have known of C s mark? What kind of domain name is it? Domain names which comprise generic words? A geographical name? Note: Rights or legitimate interests in a domain name can be found based on the generic or dictionary meaning of the word/phrase in the domain name if genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning.

18 Domain names comprising generic terms Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited (WIPO Case No. D ) <dextra.com> Held: Complaint denied. Use of the domain name for a website that offers generic links of common interest and links generated using the descriptive nature of the term dextra is perfectly legitimate. The links did not relate to C s business nor were they aimed at targeting or trading off its specialized construction products business. There was no reason why R should have known of C s business and the DEXTRA mark.

19 Domain names comprising generic terms British Sky Broadcasting Group Plc and British Sky Broadcasting v. Global Access (WIPO Case No. D ) <skytravel.com> Held: Complaint denied. Failed on second element. Factors considered: (i) No evidence that R was aware of C s mark when domain name was registered; (ii) Evidence of use of sky travel as a phrase dating from 1920 and current widespread third party use in the travel industry; (iii) Absence of evidence that R paid a price for the domain name which reflected its value as a trade mark as opposed to its value as a descriptive term; (iv) R was using the domain name in connection with travel-related services of the kind to which the phrase refers, i.e. used descriptively.

20 Domain names comprising geographical name Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network (WIPO Case No. D ) <zermatt.com> C had rights in the trade mark ZERMATT. R tourist information provider in Bangkok; website used to promote tourism to ski resorts in Zermatt. Held: Complaint denied. Failed on second element. R s use was bona fide the services offered on the website related to the generic or descriptive meaning of the domain name. The website contained information about that geographical area. Even where trademark rights may be found in a geographical/generic term in connection with certain goods/services, it does not preclude uses that legitimately describe other goods or services which are related to the geographical area or descriptive term.

21 3 rd Element - Domain name has been registered and is being used in bad faith Most important element because Bad Faith is at play. Must show - Registered AND used in BAD FAITH Every type of evidence is welcome How? Work with Para. 4(b)

22 Bad faith - Para. 4(b)(i) Domain name acquired primarily for purpose of selling, renting, or transferring the domain name registration to C who is the owner of the trade mark or to C s competitor, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Evidence that can be used in support: Offers by R to sell the domain name prior to or after filing of Complaint are important, but some evidence may be rejected; Sham use of the disputed domain name with offer sale.

23 Query: What if there is passive holding of the domain name and R has not taken active steps to sell it or to contact the trademark owner? Consensus view: There can still be a finding of bad faith notwithstanding passive holding. Cumulative circumstances from which a Panel may find there to be bad faith registration and use include: C has a well-known trade mark, No response to the complaint was filed, R s concealment of its identity when registering the domain name, No evidence of any actual or contemplated good faith use by R of the domain name, etc. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D

24 Bad faith - Para. 4(b)(ii) Domain name registered in order to prevent owner of the trade mark from reflecting the mark in a corresponding domain name + Pattern of such conduct Evidence that can be used in support : Multiple UDRP cases with similar fact situations; A single case where R has registered multiple domain names which are similar to trade marks; R has registered other domain names incorporating the names of a number of famous movie /sports stars or incorporating well-known trade marks. Note: One or two instances of apparent bad faith registration unlikely to be sufficient.

25 Bad faith - Para. 4(b)(iv) Intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with C s mark Commonly-found circumstances which lead to a finding of bad faith registration and use: Well-known mark C s mark used on goods/services used for a long time and similar to those offered on R s website Circumstances leaving little room for doubt that R had full knowledge of existence of C and its trade mark(s) e.g. mimicking or C s website. Sponsored links on R s online location directing Internet users to C s competitors. R s concealment of identity or failure to reply to a complaint Panel may draw inferences of bad faith registration and use

26 Bad faith - Para. 4(b)(iii) Primary purpose of disrupting business of a competitor The Policy silent on: (i) (ii) who a competitor is for the purpose of the paragraph is it a competitor of the domain name owner or a competitor of C? what is encompassed by the expression business of a competitor must it be a business for commercial gain? Different views have been expressed, but this sub-element is rarely used. One view: a respondent can disrupt the business of a competitor only if it offers goods or services that can compete with or rival the goods or services offered by C (Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D ). Another view: the term competitor should not be restricted to a commercial or business competitor but should encompass a person who acts in opposition to another (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D ).

27 Thank You!