By Mr. Gerald M. Levine
The commentaries in the Weekly Digest give a good account of the panelists’ reasoning for their decisions but I thought it would also be instructive to discuss the decisions from two other perspectives. The first is the evidentiary demands of the UDRP and the second is the accumulated wisdom of authoritative decisions which cumulatively constitute the jurisprudence of domain names. Some of this wisdom certainly is in WIPO’s Jurisprudential Overview, but the world does not stop in 2017.
There has developed since the first decided case in January 2000 a substantial body of legal principles for application to an ever increasing number of factual circumstances or issues. There is, as I will discuss in this and later columns, a shared view of the law to be applied to claims of cybersquatting as well as to defenses of lawful registration. It is worth pointing out about the jurisprudence that the body of law is unevenly distributed, by which I mean that far fewer legal principles need be applied for finding cybersquatting than are applied to determining defenses of lawful registration. The reason for this is that there is more to give thought to in contested cases and this demands a richer vein of principles.
In reflecting on these differences, it might also be pointed out that the motivation for the UDRP was principally to suppress cybersquatting. One may say that protecting against overreaching trademark owners is essentially coincidental to that mission. In order to determine when there is conjunctive bad faith panelists found it necessary to define with ever finer distinctions the outside limits of protection. If I am not mixing my metaphors, panelists quickly began separating the wheat from the chaff. They quickly recognized that the body of law that they were inventing had to accommodate all circumstances having to do with claims of cybersquatting, not simply those applied to its suppression but also to rights or legitimate interests and good faith in registering domain names.
These separate and distinctive opposing rights are everywhere and every (week) day dramatized in at least 15 to 20 cases a day, 500 a month, and in the region of 6,000 a year. The registrants in 95% of these cases are cybersquatters leading to what I think of as cookie cutter decisions, although some percentage of these offer a wrinkle or two that are less cookie cutter. In defended cases we generally see application of a “richer vein of principles” that I mentioned above, but there are also cookie cutter decisions involving complaints that should never have been launched, as we will see in the final case cited below.
Muitas Ltd v. Andrey Leonov, WIPO Case No. D2024-0409 (where the asserted mark is CLIPS4SALE and the disputed domain name is clips-4-sale.com), the circumstances reflect a typical cookie cutter case of cybersquatting. The respondent does not appear, the domain name is virtually identical to the mark or confusingly similar (the addition of dashes), evidence from the website shows that “the disputed domain name [. . .] redirect[s] Internet users to a website displaying adult content in competition with Complainant’s services” (lack of rights or legitimate interests), and “the disputed domain name resolved to a website exposing content similar to Complainant’s website and including the trademark CLIPS4SALE aiming to divert Internet users” (proving that the respondent registered and is using the disputed domain name in bad faith). The Panel draws from the jurisprudence no more than the minimum needed to find cybersquatting.
In contrast are defended cases (or if undefended, ones that raise triable issues of fact). They display a vastly wider array of factual circumstances. For example, in Schneider Electric SE v. Waldemar Schneider, WIPO Case No. D2024-0109 (asserted mark is SCHNEIDER ELECTRIC and disputed domain name is <schneider-elektrik.info>) the parties share the same surname but are domiciled in different national jurisdictions. Further, one has an international reputation while the other is local to his jurisdiction but there is no evidence of targeting the trademark. The Panel concluded:
The reputation and long standing use of Complainant’s mark internationally and the specialization of Respondent in the field of electricity, does indeed indicate that Respondent may have had knowledge of Complainant, however the Panel finds that the evidence in the case file as presented by the Parties, does not indicate that the Respondent’s aim in registering the Domain Name was to profit from or exploit the Complainant’s trademark, rather than registering his own surname for his electricity related business.
Whatever the nature of the dispute, to prevail demands proof of claim or defense. In Muitas Ltd there is a simple narrative. In essence: “this who we are and this is what the respondent is doing that supports cybersquatting.” But in Schneider Electric this formula is reversed by a counter narrative: “this is who I am and why my registration was lawful.” To succeed with the counter narrative is no different than succeeding with the moving narrative: there must be evidence of “who I am” and we learn from the Schneider Electric Panel that “the Respondent submitted [. . .] his businesses registration with the local Chamber of Crafts in Germany, under his name and surname and for a business in the field of electricity.”
Precisely how demanding the proof is illustrated in Rymera Web Co Pty Ltd v. Brian Harris, Claim Number: FA2402002084506 (March 13, 2024). It too is a cookie cutter decision but here in mirror opposition to cybersquatting involving the descriptive phrase “Wholesale suite” and resulting in the Panel dismissing the complaint:
The Complaint refers to the domain name’s WHOIS information but does not annex a copy. The WHOIS information provided by Forum to the Panelist shows that the <wholesalesuite.com> domain name was registered on June 3, 2016, more than five years before Complainant applied to register its WHOLESALE SUITE word and logo marks with the USPTO and just over one year after Complainant’s claimed first use of those marks in commerce. There is no evidence to support the conclusion that Respondent, based in the United Kingdom, was likely to have been aware in June 2016 of Complainant’s use of either mark before registering the domain name. Complainant’s rights in its registered marks did not accrue until, at the earliest, November 4, 2021. Accordingly, even assuming that Respondent, at the time of the filing of the Complaint, had no rights or legitimate interests in the domain name and that Respondent is presently using the domain name in bad faith, Complainant has not shown that the domain name was registered in bad faith.
And not surprisingly, the Panel also sanctioned the Complainant for reverse domain name hijacking. Here again, too, as in Schneider Electric the parties are located in different national jurisdictions.