When Cybersquatting Meets Creative Storytelling
May 20, 2016
The Merriam-Webster dictionary defines the word “incredible” as “too extraordinary and improbable to be believed.” While this may be a great adjective when used by excited sports announcers or by proud relatives at school graduations, it’s a word you generally don’t want to see in a UDRP decision about cybersquatting when you’re the respondent.
In my last blog post, I talked about decisions where I felt that domains were unfairly transferred away from respondents who were, arguably, using them in a generic manner. In this post, I’d like to focus on the other side of the coin, where respondents attempt to fool a UDRP panel into deciding that their use of the accused domain is somehow legitimate and in good faith, when, in fact, there is cybersquatting at hand. Given the limited scope of the UDRP when it comes to testing the reliability of evidence, many unsophisticated cybersquatters attempt this approach. Thankfully, very few ever succeed.
A Menu of Cybersquatting Cases Amid Bad Faith Registrations
One of the best examples of this approach is found in a case I filed on behalf of a certain well-known franchise that sells donuts and coffee, seeking transfer of the domain name dunkin.menu. In his response, the Respondent claimed that he was promoting a series of basketball classes in New Delhi, India, and that, as part of these classes, he taught a variety of techniques for dunking the ball. This, he claimed, supported his use of the shortened word “dunkin,” and the different techniques he taught constituted a “menu.” He also submitted into evidence digital versions of posters he claimed to have distributed throughout the city listing various class dates and schools at which the events would be held. In the UDRP decision granting a transfer of the domain to the Complainant, the Panel found that the Respondent’s story was not credible. This was supported by the fact that the Respondent owned a number of other .menu domains which copied various famous restaurant trademarks and the fact that inquiring phone calls to most of the schools mentioned in the posters resulted in responses such as “we’ve never heard of this guy or his classes” and “we don’t even have a basketball court here.” As an interesting postscript to this case, the Respondent personally phoned me some time later, having received my demand letter pertaining to a different famous brand owner. During the call, he confided that he knew he would lose another UDRP case and that he didn’t want to email me his inflated sale offer, as he knew it would be used as evidence of bad faith.
In another case, the Respondent sought to validate its legitimate interest in a domain by submitting a Malaysian company registration certificate using the same name. However, the panel noted that, “detective work by Complainant has shown that this [company] name was in fact only registered after the date when the Complaint was filed” since the certificate’s date had been altered by the Respondent (the fact that the Respondent also owned many other domains that incorporated well-known trademarks likely didn’t help his case either) and therefore didn’t disprove cybersquatting.
More recently, a Respondent’s explanation for its registration of the domain monsterenergy.ren is that he was creating a domain to promote his family’s longstanding roast chicken stall in China. The Respondent chose the name “Magician Anna’s Chicken” (pronounced in Chinese, “mo shi an na ji) which in Chinese sounds like Monster Energy. It also claims to have spent about US$10,000 in setting up its website. However, the Chinese-speaking panel found that “[t]he explanation given from the leap from this name to ‘Monster Energy’ is not very convincing. “Monster Energy” is not a typical expression in Chinese or English for meat smoking or energy giving meals.” It added that the “Respondent’s explanation of its selection of the Domain Names is disingenuous and highly unbelievable.” Finally, anyone who was spending that much money to set up its website would surely have learned, through a simple search, that the Complainant had strong rights to the “MONSTER ENERGY” trademark.
Worst Case Scenario Cybersquatting Meets Best Practice UDRP Complaint Procedures
While these cases make for funny stories after the fact, the reality is that they unnecessarily cause complainants additional time and expense in having to conduct extra investigations into the claims of respondents and file additional submissions. In a worst case scenario, a bold-faced lie could result in a true perpetrator of cybersquatting improperly avoiding the consequences of its illegal activities by continuing to own an infringing domain or forcing the brand owner to spend even more money pursuing the matter through the courts — exactly what the UDRP was designed to prevent as a litigation alternative. Unfortunately, these scenarios will continue to remain a fact of life for brand owners and their representatives. As always, the best approach for complainants is to retain experienced counsel who have seen many of these situations before and are best prepared to fight them.