Back to School: 5 UDRP Rules for Trademark Owners

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September 23, 2016

By jbourne

shutterstock_314871770The UDRP is a useful tool for trademark owners, but it does not offer a blanket solution for every perceived infringement because of specific rules. Moreover, unsuccessful complaints can have negative consequences for the complainant and counsel in question.

“Complainants can misinterpret or misunderstand how the right to the freedom of speech, selection of judicial venue, or fulfillment of the UDRP’s criteria apply to their situation,” explains Steve Levy. “And losing a complaint means losing time and money. It can even result in a reverse-hijacking complaint against the trademark owner.”

In-house counsel, domain name administrators, and marketers should note the following UDRP rules when determining whether to file a complaint or not.


UDRP Rule 1: You Must Actually Be The Trademark Owner

Sometimes the reason for denial of a complaint is straightforward. Phillip Island Nature Park Board of Management Inc. v. The Trustee for the Langford Family Trust is one such case. Simply, the complainant did not have sufficient legal rights to the disputed domain name, churchillislandcafe.com.au.

In previous decisions, panels have held that entities cannot claim trademark rights related to a place “unless its geographical significance is shown to have been displaced by long and extensive use as a brand by a single trader in such a manner as to distinguish that trader’s goods and services from those of competitors.” While the complainant in this case had exclusive rights in relation to the management of Churchill Island, it did not sufficiently show that it had employed the name “Churchill Island” as a trademark. Rather, the respondents, under a lease from the complainant, operated their café under the name “Our Café @ Churchill Island” for five years, which was not found to represent “long and exclusive use of that name as a trademark in respect of café services” by the complainant itself. Further, whether respondents no longer have any rights to or legitimate interests in the disputed domain depends on an analysis of the lease— and the UDRP complaint is not designed to adjudicate contractual disputes.


UDRP Rule 2: Your UDRP Complaint Cannot Violate Free Speech

In other cases, the issue may be less self-evident, such as in Shaw Cablesystems v. Domain Admin/Whois Privacy Corp. This UDRP complaint case, which involved a seemingly defamatory domain name, <fuckshaw.com>, hinged on the question of bad faith, as judged by the panel.

For the complainant, who owned the mark “SHAW,” it seemed clear that the disputed domain was registered in order to “tarnish” its brand as the domain redirected visitors to a YouTube video criticizing Shaw Cablesystem’s business.

Unfortunately for the complainant, its assertion of bad faith was submitted without any supporting evidence. Without even an exhibit showing redirection of the domain to the relevant YouTube video, the panel found that the domain name’s content was in keeping with free speech rights.

Even though the SHAW mark was clearly the ‘salient feature of the disputed domain name even with the addition of the non-distinctive and generic word “fuck,” and the generic top-level domain (“gTLD”) “.com,”’ the complainant’s failure to show the panel how the respondent was using the domain in bad faith and why the respondent lacked rights and legitimate interests to the domain name was sufficient to lead to the case’s denial. Cases like this, where obvious mistakes are made by a brand owner’s representative, highlight the fact that UDRP complaints should only be filed by those with a depth of experience in this field of law.


UDRP Rule 3: Trademark Disputes Cannot be Resolved Using the UDRP

Another, less obvious case is NZ Manufacturing, Inc. v. Eric Snell. The domain names at issue were <stretchcordz.com> and <1stretchcordz.com>. Both domain names consist of generic words, though one of them is intentionally misspelled.

In this instance, the panel found that, at its core, this was a trademark dispute and, therefore, outside of the intended purview of the UDRP. While trademarks are at the heart of the UDRP, the policy exists to enforce established trademark rights against online infringements, not to resolve trademark rights disputes.

Here, the respondent filed for a cancellation of the complainant’s U.S.-registered trademark STRECHCORDZ on the ground of “genericness”—after the start of the UDRP complaint proceeding. Typically, the panel explained, had it “been only for the sole fact that a petition for [trademark] cancellation was filed […] after the initiation of the present proceedings, the Panel might have decided to proceed with reviewing the case under the Policy, as long as [the] complainant asserted that the acquisition and use of the domain names subject to this dispute were made in bad faith.” Yet, the panel found that the existence of respondent’s rights and/or legitimate interests, one of the three key criteria of the policy, turns on resolution of a legitimate trademark dispute. As a result, the panel chose to deny the case until further resolution of the respondent’s petition.


UDRP Rule 4: Bad Faith Use of a Trademark Name Must Be Provable

While complainants file cases on the conviction that their legal rights to a given mark permit them exclusive use of a domain name, the MakerPlace, Inc v. Michael Salmon case shows that a UDRP panel will enforce these rights only when trademark owners can prove ill intent on the part of the respondent.

In this case, the panel found that the disputed domain name was indeed identical or confusingly similar to the complainant’s mark and that the respondent lacked rights or legitimate interests in the domain name. However, the panel also found that the respondent had not used the domain in bad faith. As the respondent was a former employee/contractor (“agent”) of the complainant, he had registered the domain name on behalf of the complainant, but with personal funds.


The Golden UDRP Rule: Adhere to The Three-Part Policy

If you are a regular reader of this blog, then you will know that the UDRP complaint process is designed to be a more cost-effective, quicker approach to recovering trademark infringing domain names than traditional litigation. As such, the UDRP is based on a concise, three-prong policy:

  1. The disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and
  2. The respondent has no rights or legitimate interests in respect of the disputed domain name; and
  3. The disputed domain name has been registered and is being used in bad faith.

While the UDRP may be relatively straight-forward, all three points of the Policy matter greatly and must be met in order for a decision in favor of the cinant, as the above cases show.

Even if you follow all of the UDRP rules outlined above, it can be tricky to know if these points have been met and whether recent decisions support your decision to file or not. Often, the best way to avoid the wasted time and money of an unsuccessful complaint is to work with an experienced attorney familiar with the nuances of UDRP practice.

For more information about the UDRP and when it should, and shouldn’t, be used, please refer to our white paper on the subject, available here.

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About jbourne