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There are two invariables in UDRP proceedings: the first is that 95% of all cybersquatting disputes result in cancelling registrations or transferring disputed domain names to complainants’ accounts; and the second is that respondents in this group rarely respond because the claims are indefensible; and when they do respond (speaking only of clear cut cases of cybersquatting) they generally fail to understand the evidentiary burdens demanded by the Policy. Now, this failure to understand the demands of the Policy also infects losing complainants in the 5% balance of disputes. Some claims should either never have been asserted because the disputed domain names predate the corresponding marks or on the balance of probabilities they fail because complainant’s proof is insufficient to state a claim.

Regardless whether respondents appear and defend, complainants must prove that their statutory rights have been violated. They cannot succeed simply by contending respondents’ lack rights or legitimate interests or their registration and use are in bad faith. Contentions alone are insufficient to prove anything. For certainty, it requires something more, and generally this is delivered in the form of documentary evidence sufficient, at least, if not in whole, in such amount to support a reasonable inference, that the respondent is liable for cybersquatting.  If “such amount” is equally balanced or if there is any uncertainty of motive, the complaint must be dismissed,  for the obvious reason that if any doubt there be, the benefit must go to the respondent.

However, and speaking generally based on a search of the word “doubt” in <>, when “doubt” is expressed it usually takes the form of “the panel is in no doubt that the respondent had the complainant and its rights in the mark in mind when it registered the domain name.” But in many cases there is uncertainty and this must lead to doubt, and if admitted it must be acted on. Mediacom Communications Corporation v. DANIELE RUSSO / MEDIACOM PAY S.R.L., Claim Number: FA2402002084217 is a good example because the Panel openly admits to uncertainty. I would suggest that a willingness to act on doubt is therapeutic by relieving the anxiety of committing error.  There are in its vast database UDRP decisions that a healthy dose of doubt would have resulted in a different outcome. This though is an issue for another day!

Error generally occurs on the cusp of incertitude (unwillingness to recognize uncertainty about the insufficiency of proof—a wrong path taken, the fork in the road metaphor—or a panelist simply misreads the law as when, for example, it equates confusing similarity with likelihood of confusion as in the near-miss error in Amadeus IT Group, S.A. v. Domains By Proxy, LLC / Narendra Ghimire, Deep Vision Architects, DCO2022-0040 (WIPO July 25, 2022) in which the Presiding Panel was overruled by its wings. Particularly with generic names, acronyms and descriptive phrases panelists should resist awarding domain names absent concrete evidence of cybersquatting.

Uncertainty is the gremlin in UDRP cases because complainants are most likely in the dark about the disclosed registrant and must generally rely on the distinctiveness of their marks (it is so distinctive, they may say, that it is inconceivable that respondent did not have actual notice of it, although distinctiveness to the complainant is not evidence of its reputation) or (if there is resolution to an active website) its content. They may not even know whether the registrant of record is the original registrant. A respondent’s acquisition date makes a difference as the Digest noted in a recent commentary on Carvana, LLC v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2022-3657  (<>). The Panel in this case dismissed the complaint without prejudice because it was uncertain whether the current respondent was the original registrant: if was the original, it had a superior right to the generic word, but if it was a subsequent holder postdating the mark then its motive would be measured from its subsequent registration, but it never appeared and the evidence was insufficient to conclude one way or the other.

Fortunately, in some instances respondents unwittingly inculpate themselves. In two recent cases, for example, respondents appeared informally by email and denied they were cybersquatting but no actual proof of any defense, but in both cases the domain names resolved to active websites carrying sufficient inculpatory content to draw negative inferences that the respondents registered the domain names in bad faith. In both cases complainants’ marks have achieved significant consumer recognition so clearly there was “no doubt” of respondents’ motives.

In Scribd, Inc. v. Sudheesh R, WIPO Case No. D2024-0270 (SCRIBD and <>) the Respondent’s email “ask[ed] for clarification on the procedure and details of the Complaint” but its active website “purport[ed] to be an affiliated website of the Complainant or at least claiming to offer services in connection with the Complainant. The commercial website connected with the disputed domain name reproduced the logo of the Complainant.” And in TikTok Ltd. v. Muhammad khalid, WIPO Case No. 2024-0547 (TIK TOK and <>), the Respondent “sent email communications in which he contested having infringed any UDRP policy and requested the unlocking of his domain name,” but here too the disputed domain name resolved to an active website that “gave himself away” for it “prominently display[ed] Complainant’s registered trademark, thereby giving the possible false impression that it is operated by Complainant. In fact, the Website has a fine print disclaimer at the bottom of the page indicating ‘DLScribd is Not affiliated With Any Websites (Such As Scribd.Com)’ which seems to imply that Respondent anticipates that users may be confused by the source of the Website considering the circumstances of this case.”

In contrast, the Respondent in Mediacom, supra. failed to appear but the Panel dismissed the complaint without prejudice owing to uncertainty of motive. There are two important issues in this case. The first is Complainant’s failure to adequately respond to a Procedural Order relating to the Panel’s research favorable to the Respondent; and the second is the length of time a non-appearing respondent may reasonably hold a domain name before it can be found liable for cybersquatting.  Although the Panel found exculpatory evidence in its research it was nevertheless uncertain about the Respondent’s motive for registering the disputed domain name since “almost one year [has passed] [. . .] and thus there can be legitimate doubts with respect to Respondent’s actual intentions regarding use of the disputed domain name. Consequently, the Panel will dismiss the Complaint without prejudice.” It gave the Respondent the benefit of the doubt with a warning that failure to actively use the domain name within a reasonable time may call for a re-look of the facts if Respondent’s passive use of the domain name continues.

What is the reasonable length of time beyond which there is doubt about the respondent’s intentions? How many years a registrant may hold a domain name corresponding to a mark depends of course on a number of factors. One answer is that no “general rule can be derived from the period between registration and the offering of a domain name for sale. Each case requires to be determined on its own facts,” Natixis Wealth Management v. Viljami Ylönen, Claim No. D2021-1719. Earlier cases tended to favor complainants for as little as 15 months.

In Surterra Holdings, Inc. v. Alexander Sanchez, Case No. D2024-0252 the Panel held: “Respondent’s nearly two (2) years of non-use of the disputed domain name combined with the distinctiveness and reputation of the GOODBLEND mark, and notably the lack of any Response putting forward a legitimate non-infringing purpose, provide the Panel with sufficient grounds to find that the Respondent’s use, or lack thereof, is in bad faith.” But see Mr. Muscovitch’s cautionary comment in ICA Digest Vol. 4.13. The Respondent did not appear and the Panel essentially accepted Complainant’s contentions, but those contentions are riddled with unverified contentions. Nevertheless, the Panel concluded that “the term “GOODBLEND” is not a dictionary term and is therefore a distinctive, coined term,” but the fact that “Goodblend is not a dictionary term” hardly makes it a “distinctive, coined term.” Another commentator criticized the decision for other highly pertinent reasons and the editor may wish to add those comments.

It might be pointed out that panelists rule on the record they receive, and when there are no contradictions, as there will not be from an absent respondent, the outcomes most likely favor the complainant. If there should have been doubt in Surterra Holdings, it would have been accepting “Good blend” as a “distinctive, coined term.” But the Panel stuck with the record, as the “doubter” Panel in Mediacom, supra. did not, thus the different outcomes.

About the Author: 

Gerald M. Levine, Esq. is the author of the recently published Second Edition of Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting (2019). His numerous articles have appeared in law journals and online publications and he is a frequent contributor of analytical blogs on trademarks, domain names, and cybersquatting for An upcoming book Clash of Trademarks and Domain Names on the Internet is scheduled for publication Summer 2022. Besides having an arbitration and consulting practice, he represents and counsels clients on a range of issues and disputes relating to copyright and trademark practice and law. He is on the panel of neutral arbitrators for commercial and intellectual property disputes for the American Arbitration Association, and the Financial Industry Regulatory Authority (FINRA). For disputes determined under the Uniform Domain Name Dispute Resolution Policy UDRP he is a panelist and or chair for World Intellectual Property Organization (WIPO); the Forum, the Czech Arbitration Court (CAC), and the Canadian International Internet Dispute Resolution Centre (CIIDRC). He is a regular panelist and speaker at the annual Fordham International IP Conference. He received his J.D. from Brooklyn Law School in 1975 and PhD from New York University in 1968. 

The views expressed herein are Gerald’s and do not necessarily reflect those of the ICA or its Editors. 

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