UDRP Panelist: “Panels Don’t Look Kindly Upon Re-filed Complaints That Blame UDRP Panels For Their Own Ineptitude”

icannThe Hon. Neil Brown QC, a very well known UDRP panelist, wrote an article on his personal blog about "Re-Filing of a UDRP Complaint". He is commenting on a recent decision:
Reliance Telecom Limited v Domains By Proxy, LLC, Sukhraj Randhawa, WIPO Case No. D2014-0947, Disputed domain name: <reliancegroup.com>,September 11, 2014.

Here are some interesting comments he made: Continue reading

2,634 UDRPs Filed With WIPO In 2014 – Philip Morris Filed 81 Cases (+Infographic)

wipoSince the WIPO Arbitration and Mediation Center administered the first Uniform Domain Name Dispute Resolution Policy (UDRP) case in 1999, total WIPO case filings have passed the 30,000 mark, encompassing over 58,000 domain names.

In 2014, cybersquatting case filings with WIPO increased by Continue reading

Meet The Attorney That Represents Attorneys In UDRPs

icannWebsite attorney Steven Rinehart recently won several new UDRP domain name disputes involving common law trademarks. Rinehart issued a press release about successfully establishing common law trademarks rights for two attorneys who were the target of libelous criticism websites (e.g. gripe sites), those domain names being <kendrickmoxon.com>, a California attorney; and <jonahhunt.com>, a Denver attorney.

Rinehart represents clients, with a few attorneys amongst them, in domain name disputes involving Continue reading

Potential Scandal At WIPO Involving Director General Francis Gurry

TheRegister did an article yesterday exposing allegations of bizarre and potentially illegal conduct within the World Intellectual Property Organisation (WIPO). The Register obtained access to an internal report indicating reasonable grounds to suspect serious misconduct within the UN agency.

"The report, published exclusively by The Register today, outlines serious allegations against WIPO chief Francis Gurry. The organisation's staff council has also demanded a prompt and independent investigation.

An OnlineDomain.com reader brought this article to my attention and he also commented that "Francis Gurry has been a flag-waver for UDRP from day one, and he has written some very one-sided papers trying to expand the power of the UDRP against domainers. He's always putting out releasing saying that cybersquatting is on the rise, even when it isn't." Continue reading

Pharmaceutical companies filing a lot of UDRP complaints

I was going through UDRP complaint fillings and noticed that a lot of pharmaceutical companies are quite active in filing complaints lately. There was always a company that was going stronger at one time or another but this time there are multiple pharmaceuticals filing 10s of UDRP complaints.

Sanofi has filed for more than 350 URDP complaints in the past 10 years. From sanofi.net in 2003 up until sanofiaventi.com in December 2013. Sanofi has won most of the complaints with the latest being sanofi-sun.com. Very few UDRP complaints from Sanofi has been denied including the complaint for the domain name sinofn.com. This was great decision that displays what a Panelist's job includes: investigation and critical thought. Good job from Panelist Susanna H.S. Leong.

Pfizer Inc. has already won 2 UDRP complaints (for viagra-pfizer-france.com and for pfizerlegaldept.com/pfizerltd.com) in 2014, for a total of over 90 since 2000.

Hoffmann-La Roche Inc. has won 5 UDRP complaints in 2014 and has filed a total of more than 180 complaints since 2003. I am not sure why these 5 complaints (eg. for accutaneus.com) were not part of a single UDRP complaint since all domains are registered in the same registrar, all under privacy with no real name revealed, and all include the same circumstances and the same Roche trademark. Actually 4 out 5 were decided by the same Panelist.

Apple is going after misspellings of Apple.com with UDRP

Apple is going after misspellings of its official website Apple.com using UDRP complaints.

Apple, Inc filed 2 UDRP complaints for the domain names appke.com (k is next l in qwerty keyboards) and applw.com (w is next to e).

The domain name appke.com was registered in 2001 and is owned by a Hong Kong company and is parked at Sedo and offered for sale. The iphone related ads may hurt the case in UDRP.

The domain name applw.com was registered in 2000 and is owned by a person in California and is parked at Bodis and is also for sale. This domain also has apple related ads.

Apple is no stranger to UDRP having filled 31 complaints since 2008. Apple has won every case. They won a couple other misspellings such as aplle.com and appl.com. Also the complaints for the domains wwwapple.com and applle.com were terminated probably because the owner gave the domains to Apple.

First Ever UDRP Complaint Filed For a New gTLD Domain Name: Canyon.Bike

The first ever UDRP complaint for a New gTLD domain name was filed today, February 11th, at WIPO. The UDRP complaint with WIPO Case Number D2014-0206 was filed by Canyon Bicycles GmbH, a German bicycle company.

The domain name Canyon.Bike was registered on the 5th of February using a pre-registration order at Go Daddy for about $25. The domain is still behind whois privacy that will be removed shortly because of the dispute.

This was one of the fastest UDRP complaints I have ever seen. It took the German company less than 4 working days to file it. The fact that it is a slam-dunk case must have helped. Canyon Bicycles GmbH has a European Union trademark for the mark "Canyon" for bicycles. The mark "Canyon" was not registered in the Trademark Clearinghouse. One Trademark Registration costs $150 for 1 year.

Before this complaint, a complaint was also filed for ibm.guru and ibm.ventures but that was a URS complaint filed by IBM at the National Arbitration Forum (NAF) on the 6th of February. NAF is the sole URS provider for now. That was the first URS complaint filled for any New gTLD domain name.

But a UDRP complaint is different than a URS one. The complaint, if successful, will result in a transfer of the domain name to the complainant.

Through the URS Procedure ICANN offers a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. The URS filling fee at the National Arbitration Forum is $375 for up to 14 domain names. The URS can only lead to suspension of the domain names. The URS will not provide the transfer of the disputed domain name to the trademark holder. If the trademark owner wants to take ownership of and use the disputed domain, it should instead file a UDRP complaint or other legal action.

So complainant Canyon Bicycles GmbH chose the UDRP complaint that costs $1500 to file so that it will take ownership of the disputed domain name.

UDRP for Gooru.com denied but no RDNH – Owner declined selling domain registered 13 years before trademark

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

The UDRP complaint for the domain names gooru.biz, gooru.com, gooru.net and gooru.org was denied but Panelist *Gabriela Kennedy* didn't make a Reverse Domain Name Hijacking finding and gave no explanation about her decision.

She only said:
"The Panel, on the balance, finds that the Complaint was not made in bad faith as an attempt at Reverse Domain Name Hijacking."

The "on the balance" part was her full discussion as to why this wasn't a Reverse Domain Name Hijacking. And that was clearly a contradiction of what she said earlier on the discussion of the 2nd element of the UDRP.

The Complainant is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name <goorulearning.org>, for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant's Website”). The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.

The Respondent is based in Italy. The Disputed Domain Names were registered as follows: <gooru.com> on December 9, 1999 and <gooru.biz>, <gooru.net> and <gooru.org> respectively on February 21, 2003. The Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that includes sponsored links, and <gooru.com> and <gooru.net> are currently inactive and resolve to a website that states that the site is under construction.

This is what the Panelist said:
"In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant. The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit. Contrary to this, the email correspondence provided by the Complainant shows that the Respondent had no desire to enter such negotiations. The Panel finds that this further supports the Respondent’s contention that he is making preparations to use the Disputed Domain Names for a bona fide offering of services, rather than to misleadingly divert consumers for commercial gain.

Lastly, the Panel notes that the Complainant first approached the Respondent in January 18, 2011, around the time that the Complainant was first established; over a year before it registered its trade mark GOORU in the United States of America, and 12 years after the first Disputed Domain Name was registered. The Complainant had therefore been aware of and knew that the Respondent was unwilling to transfer the Disputed Domain Names, and intended to use the Disputed Domain Names for its own business purposes, before the Complainant registered and began using the GOORU mark."

For the foregoing reasons, the Complaint was denied but Gabriela Kennedy refused the Reverse Domain Name Hijacking finding.

This was a clear cut Reverse Domain Name Hijacking attempt but Panelist Gabriela Kennedy has never made a RDNH finding and she is not about to start now. More on this on another post.

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

Aged domain names: a change in ownership is considered as a new registration in UDRP

There are a lot of people that buy aged domain names. By aged I mean domains that have an old registration date. You can buy these domains either directly from the previous owner or in expiring domain name auctions. Although you can buy some pretty good keyword domain names there is no UDRP advantage in buying these aged domains if a trademark already exists before you acquire them. A change in domain name ownership is considered as a new registration as far as UDRP is concerned. If a trademark was registered between the initial registration and your acquisition date then the domain name is not treated a being registered before the trademark registration in a potential UDRP. Only the previous owner could have used this as a UDRP argument. Of course there are other aspects to a UDRP that most a mentioned below. Just remember that every UDRP case is different.

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) may not be a law, as it's name suggests. It is a policy. But nevertheless it is governed by a set or rules, it is not merely dependened on prior decisions. Complainants, Respondents and Panelists use past decisions to support their arguments but there are usually decisions that support both sides of an argument. There is no precedent in UDRP.

Of course on most of these issues, consensus or clear majority views have developed. For example the WIPO Arbitration and Mediation Center has produced its informal overview of panel positions on key procedural and substantial issues. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") was published in 2011.

That being said there is one rule in UDRP that has not been questioned by any Panelist and/or any serious Respondent: "A change in ownership is considered as a new registration as far as UDRP is concerned.”

This is clearly mentioned in 3.7 Question of the WIPO Overview:
"While the transfer of a domain name to a third party does amount to a new registration, [...]."

This rule is only relevant when trying to prove or not the 3rd element of the UDRP and specifically if the Respondent registered a domain name in bad faith. This is only half of the 3rd element of the UDRP. ("the domain name has been registered and is being used in bad faith")

If the registration date or the date of acquisition (whichever comes later) of a domain name is prior to the date of the trademark registration then it is clear that the domain was not registered in bad faith.

This rule does not work the other way around. It does NOT mean that if a registration or acquisition date postdates a trademark then the registration was done in bad faith. In this case other factors are then taken into account such as the location of the Respondent as related to the trademark registration region etc. And again this only relates to the first half of the 3rd element of the UDRP.

So if the registration of a domain name predates the date of a trademark registration then the UDRP complaint should be denied without going into much consideration of the other parts of the UDRP policy. And if many such cases reverse domain name hijacking (RDNH) has been found.

The only exception to the rule above is if you transfer the domain to maybe some other member of your immediate family (or in a case of death) or if a company changes names or is acquired as a whole by another company etc.

I also have to point that if a domain name is transferred to a new owner with a preexisting business and/or trademark then this case is generally not treated as an individual domain name transfer would.

So there is no UDRP advantage in buying aged domains if a trademark already exists. This is something that all registrants should be aware of. Of course as I always say the most important argument you can have in order to defend a domain name in a UDRP is usage. Use the domain name avoiding any new or old trademarks and you will be mostly safe.

I wrote this post because there is some wrong notion that this rule "While the transfer of a domain name to a third party does amount to a new registration, [...]." is adopted by a small percentage of panelists. No, this is a rule followed by everybody involved in the UDRP process and has nothing to with legitimate use or bad faith usage. These are examined separately.

Finally, I have to say that I thought of providing some links to decisions that have followed this rule but I saw no point in that as I was not able to find a single case advocating the opposite. If anyone wants a few links just leave a comment.

Azzaro perfumes wins 14-year-old domain Azzaro.com after refilling a 13 year old UDRP complaint

Loris Azzaro BV of Apeldoorn, Netherlands that produces the popular Azzaro perfumes just won a UDRP complaint (D2013-1780) for the 14 year old domain Azzaro.com. The interesting part is that this UDRP complaint was a refiling of a previous complaint, the decision of which is recorded in Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos, WIPO Case No. D2000-0608. The complaint was denied in the 2000 case.

The Respondent was in both complaints Mr. Vasconcellos of Rio de Janeiro, Brazil and in both complaints he did not file a response.The Panelist John Swinson noted that "This does not automatically result in a decision in favor of the Complainant (see e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454). However, the Panel may draw appropriate inferences from the Respondent’s default."

Mr. Vasconcellos seems to have some sort with affiliation with "LINECOM Trading Co., Ltd's Internet Team" and dreamwiz.com.

Another interesting fact is that the domain Azzaro.com has been expired since September.

In a decision dated September 4, 2000, the prior panel denied the complaint on the basis that there was not sufficient evidence before the prior panel in relation to bad faith use or registration. At the time of the prior complaint, the Disputed Domain Name resolved to a website that was “under construction”. It now contains links to various websites that advertise and sell perfumes and cosmetics.

"A “refiled complaint” is “a complaint respecting a domain name that was the subject of a previous UDRP complaint involving the same complainant and respondent who are involved in the subsequently filed complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 and cases cited therein). Previous UDRP panels have held that a refiled complaint may only be allowed in “exceptional circumstances” (see, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). Panels have drawn a distinction between refiled complaints relating to (a) acts forming the basis of the original complaint and (b) acts occurring after to the decision on the original complaint. Here, the Complaint falls within the latter category. The Complainant argues that the Complaint should be accepted based on the change in the content of the Respondent’s website, and the steps the Respondent took to “cover his identity”.

The principles to apply when determining whether to accept a refiled complaint are outlined in The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757. They are as follows:

(i) the burden of establishing whether the refiled complaint should be accepted rests on the refiling complainant;

(ii) the refiling complainant’s burden is high; and

(iii) the grounds that allegedly justify acceptance of the refiled complaint should be clearly identified by the refiling complainant.

Where the refiled complaint concerns acts occurring after the original complaint and decision, the complainant must prove that the “refiled complaint constitutes a ‘new truly action’ under the Policy, and not just an application for readjudication of the previous complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757). Accordingly, the Complainant must independently prove all the elements of paragraph 4(a) of the Policy.

In this case, the new facts and circumstances outlined in the Complaint are relevant to the issue of the Respondent’s bad faith use of the Disputed Domain Name. As such, the Panel finds that the Complaint can be considered a “truly new action”. Moreover, a significant period of time has elapsed since the original complaint was filed, and the Respondent has made no submissions that this Complaint should not be considered accepted, and these are also factors that this Panel considers to be relevant to this issue. In view of the above, the Panel accepts the Complaint."

In the discussion the Panelist said that "The Respondent had the opportunity to demonstrate its rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy."

"Paragraph 4(b)(iv) of the Policy states that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) is sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.

The website operated by the Respondent at the Disputed Domain Name displays “click-through” links to websites selling the goods of the Complainant’s competitors. The Panel infers that some Internet users, once at the Respondent’s website will follow the provided links and “click-through” to these websites. The Respondent will earn “click-through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see, e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020 and cases cited therein).

Additionally, the Panel infers that by changing his details to simply state “Personal” the Respondent is attempting to conceal his identity. This is further evidence of bad faith.

The Respondent had the opportunity to provide evidence of good faith use of the Disputed Domain Name but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any such evidence (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and cases cited therein).

In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b)(iv) of the Policy."

"For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <azzaro.com> be transferred to the Complainant."