5 Nov 2022

UDRP: Responding to a Complaint

Author CyberGhostface Licence Out of copyright Source Wikimedia Commons

  




















Over the last few days, I have been writing about the Uniform Domain Name Dispute Resolution Policy ("UDRP"),  The UDRP is an alternative dispute resolution procedure for resolving disputes between brand owners and domain name holders over the right to register a domain name,  As I said in The Terms that are incorporated into every Agreement to register a Domain Name on 30 Oct 2022, it works because an agreement to refer such disputes to the UDRP is incorporated into every agreement for the registration of a generic top-level domain name.

On 2 Nov 2022, I discussed how a brand owner can claim the transfer or cancellation of the registration of a domain name that is identical or confusingly similar to its trade mark or trade name in  Complaints under the UDRPIn the last paragraph of that article, I promised to discuss how a domain name holder should respond to such a complaint in my next post.   As it happens, I discussed that topic in Defending your Domain Name in the UDRP which appeared in NIPC Law on 28 Nov 2015.

Even though that article is nearly 7 years old it is still relevant.  It requires updating in only two respects.  The first is that WIPO Overview 2.0 which I mentioned in the "Essential Reading" paragraph has now been superseded by WIPO Overview 3.0.   The second is that it is very difficult to challenge the decision of a UDRP panellist in the English courts (see Yoyo.email Ltd v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch) (2 Dec 2015) and  Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016)).

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

2 Nov 2022

Complaints under the UDRP

Author WIPO Licence CC BY-SA 4.0 Source Wikimedia Commons

 
























On Sunday I discussed the Uniform Domain Name Dispute Resolution Policy ("UDRP") in The Terms that are incorporated into every Agreement to register a Domain NameIn this article, I consider how to bring a complaint under the Policy.

Why Use the UDRP
A brand owner who discovers a domain name that is identical or confusingly similar to his or her trade mark or trade name can usually bring an action for trade mark infringement or passing off in the English or other national courts (see British Telecommunications Plc and others v One In A Million Ltd and others [2001] EBLR 2, [1998] EWCA Civ 1272, [1998] 4 All ER 476, [1999] ETMR 61, [1998] Masons CLR 165, [1998] ITCLR 146, [1997-98] Info TLR 423, [1999] 1 WLR 903, [1999] FSR 1, [1999] WLR 903, [1999] 1 ETMR 6). The courts can sometimes grant an interim injunction within hours of the issue of a claim form and summary judgment within a few weeks if a defendant is within their jurisdiction.  They can also award damages and costs which UDRP panellists cannot.  However, court orders are difficult to enforce if the defendant is abroad or his identity or whereabouts are unknown and generally litigation is slow and expensive.  By contrast, an application to the WIPO for the transfer of a single domain name costs US$1,500 and a decision can be expected long before the time allowed for an exchange of pleadings.  The whereabouts or identity of a respondent is not an issue because the registrar is contractually bound to implement a panellists's order for the transfer of a domain name or the cancellation of a registration. 

Relevant Materials
The jurisdiction to transfer a domain name is contained in para 4 (a) of the UDRP which I discussed in my previous article. Brand owners or their legal representatives should also be aware of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and each service provider's supplemental rules.  The latest version of WIPO's Supplemental Rules is to be found on its website.  Although there is no doctrine of stare decisis as suchpanels tend to follow previous decisions. Each service provider publishes its panellists' decisions on its website.  The WIPO has compiled an overview of its panels' views on selected UDRP questions which is now in its third edition ("WIPO Jurisprudential Review 3.0).  It also provides a guide to the UDRP.  

Procedure
Domain name dispute resolution proceedings are entirely in writing.  They begin when a brand owner files a complaint. Complaints to the WIPO can be filed directly online or on a model complaint form attached to an email.  Upon receiving a complaint, WIPO's Arbitration and Mediation Centre checks it for formal compliance with the Rules and Supplemental Rules.  Many domain name holders use businesses known as "privacy services" to hold the domain names on their behalf.  The WIPO or other authorized service provider may require the disclosure of the actual holder of the domain name. When that is done, a complainant may be invited to amend his or her complaint by adding the name of the actual holder as well as the privacy service as respondents.  The complaint is then served on the respondent who has 20 days in which to respond.   As often as not, a respondent fails to file a response within that time. Failure to respond does not result automatically in an adverse decision.   The complaint and any attachments or enclosures are sent to the panel who decides whether the complaint is made out.

Identical or Confusingly Similar 
The first element that a brand owner must prove is that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. Readers should note that it is necessary to prove that the domain name is identical or confusingly similar to just one trade mark and that trade mark can be registered anywhere in the world. In fact, it is not even necessary to show that a trade mark has been registered. Evidence of a right to bring an action for passing off will suffice. Lawyers acting for multinationals are tempted to refer to and exhibit their client's worldwide portfolios. There is no need for them to do so. It adds nothing to the case. Similarly, there is no need to annex authority that the ", com", ".org" or other gTLD suffix is disregarded. That is obvious. Excessive citation runs up costs and infuriates the panel who has to read all that matter for a US$1,000 fee. Identity or confusing similarity is a matter of impression and usually self-evident.

Trade mark registrations or the facts and matters giving rise to an action for passing off can conveniently be stated in para VI "Factual and Legal Grounds" of the model form. Any explanation as to why the domain name is similar to the trade mark should be inserted in para 12 A "The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

The Respondent has no Rights or Legitimate Interests in the Domain Name
The second probandum is that the respondent has no rights or legitimate interests in the domain name.  This is somewhat more difficult because it appears to require the complainant to prove a negative.   Para 2.1 of the WIPO Jurisprudential Review 3.0  provides the following guidance:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

One way of making out a prima facie case  is to show that none of the circumstances in para 4 (c) applies:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"

It is also worth alleging that the use of the domain name would infringe a trade mark or constitute passing off and that the complainant granted no licence for such use.   As I said above, it is rare for a respondent to file a response.   It follows that the shifted burden of production is rarely rebutted.

Registration and Use in Bad Faith
The complainant has to show that the domain name was registered and is being used in bad faith.   At first blush this appears to be another difficult burden to discharge as an allegation of bad faith is a serious accusation in that it connotes impropriety if not actual dishonesty.   Also, a complainant must prove both registration in bad faith and use in bad faith.

The burden is alleviated by para 4 (b) of the UDRP which provides that "the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:"   Those circumstances are as follows:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

At least one of those circumstances applies to most cases, particularly the last as the disputed domain name is often used for a page with sponsored links and searches.  The click-through revenues from those links and searches constitute "commercial gain". As the panel is likely to have found that the domain name was confusingly similar to the claimant's trade mark the requirements of para 4 (b) (iv) will have been satisfied,.  It should be noted that the circumstances in para 4 (b) constitute only evidence of use and registration in bad faith which can be outweighed by other evidence but I have never seen it done.

Further Information
I first discussed this topic in Domain Name Registration which appeared in NIPC's Chambers Newsletter for October 1997.  Two years later the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the UDRP which I had envisaged in that 1997 article.  Shortly after the UDRP was launched, I settled one of the first complaints from the United Kingdom (and the first one ever to be settled by an English barrister) (see Re Superfi.com WIPO Case Number D2000-0789 Eddys (NottinghamIPO) Limited, trading as Superfi v. Mr Kingsley Smith  7 Sept 2000).  Not long afterwards, the WIPO invited me to join its panel and I decided my first case on 4 April 2004 (see WIPO Case No. D2004-0124 Microsoft Corporation v. TheBuzz Int (microsoftcore.com) 4 April 2004).  In my capacity as a panellist, I have resolved many disputes since then,  As a barrister, I have advised and drafted complaints and responses for both brand owners and domain name holders.

In my next article I will; discuss responses under the UDRP.    Anyone enquiring about the UDRP may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page at other times.  

30 Oct 2022

The Terms that are incorporated into every Agreement to register a Domain Name

 File:Icann logo.svg

Jane Lambert

One of the reasons why the internet works as well as it does is that there is a fast and relatively inexpensive procedure for resolving disputes between brand owners and domain name holders.  That procedure is contained in a document called the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP is incorporated by reference into every agreement for the registration of a generic, and many country-code, top-level domain names.  Domain names ending in ".com", ".org" or ".biz" are examples of generic top-level domains ("gTLD"). Domain names ending in a two-letter country code such as ".nu" (Niue). ".tv" (Tuvalu) or ".ws" (Samoa) are country code top-level domains ("ccTLD").

The UDRP is incorporated into domain name registration agreements upon the insistence of a not-for-profit California company called the Internet Corporation for Assigned Names and Numbers ("ICANN").  ICANN was established at the behest of the United States government to regulate the allocation of domain names.   ICANN subcontracts the registration of gTLD to businesses known as "registrars" and ccTLD to national domain name registration authorities.  One of the terms of ICANN's agreements with those registrars and authorities is that the registrar or authority will incorporate the UDRP into every agreement for the registration of a domain name that it enters with a third party. 

Para 1 of the Policy states that the UDRP's purpose is to set forth the terms and conditions in connection with a dispute between the domain name holder and brand owner over the registration and use of an internet domain name.  In the Policy the pronouns "we" and "us" refer to the registrar or other authority and "you" to the person registering, maintaining or renewing a domain name.

An important but frequently overlooked provision of the Policy is para 2 which sets out the representations and warranties that every person seeking to register, maintain or renew a domain name makes to the registrar or other authority.  It will be recalled that a representation is an assertion as to a fact, true on the date the representation is made, that is given to induce another party to enter into a contract or take some other action and a warranty is a promise of indemnity if the assertion is false.  These representations and warranties are as follows:

"(a)    the statements that you made in your Registration Agreement are complete and accurate; 

(b)    to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; 

(c)    you are not registering the domain name for an unlawful purpose; and 

(d) you will not knowingly use the domain name in violation of any applicable laws or regulations."

It is the responsibility of the person seeking registration, maintenance or renewal of the domain name to determine whether the domain name registration infringes or violates someone else's rights.  It will be appreciated that these are onerous obligations.

Para 3 of the Policy sets out the circumstances in which a registrar or other authority may cancel, transfer or otherwise make changes to a domain name registration.   These include "receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy".  

Para 4 sets out "the type of disputes for which you are required to submit to a mandatory administrative proceeding."  Subpara (a) provides:

"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

Para 4 states that those proceedings will be conducted before one of the following administrative-dispute-resolution service providers:

Each of those service providers has a list of panellists who will decide the dispute on the documents that the parties submit to them.   Those documents will always include a complaint and exhibits known as annexures from the brand owner.  Sometimes there will be a response from the domain name holder.  After receiving the complaint and any response that may have been filed the service provider will appoint a member of its panel to determine the dispute as a sole panellist.  If the respondent pays an additional fee each of the parties may choose a panellist for a three-member panel.

Most panellists are lawyers specializing in intellectual property or patent or trade mark attorneys.  I have served on the WIPO panel for nearly 20 years.  I have also drafted complaints for trade mark owners and responses for domain name holders.  Complaints and responses are submitted on online forms.   In the next and subsequent articles, I will discuss how to complete the complaint or response in a way that is likely to appeal to a panel. I will also warn of the sort of submissions that are likely to infuriate the panel. Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 or send me a message through my contact page

6 Jul 2022

The IPR Help Desk's Domain Name Primer

Circle of 12 gold stars on a blue background 











Jane Lambert

The IPR-Helpdesk is an EU-funded service that supplies information on intellectual property to small and medium enterprises.  It carries out research into IP, publishes regular newsletters and other publications and holds webinars and other events.  Among its most useful publications are infographics that communicate essential information in a digestible format.

The latest of those infographics is on Domain Names and Cybersquatting which can be downloaded free of charge from the EU Publications Office.  That document explains what is a domain name, what is meant by the terms TLD (top-level domain), second-level domain and third-level domain and the difference between generic and country-code top-level domains.  It discusses how to register domain names, the practice of cybersquatting and what can be done to prevent it.

Readers who require further information on domain names, cybersquatting and dispute resolution may read my articles on Domain Name Disputes and Dispute Resolution Policies and Domain Name Glossary.  The Uniform Domain Name Dispute Resolution Policy is one of the most successful alternative dispute resolution schemes in the world.  For a few hundred United States dollars, trade mark owners or those who could bring an action for passing off can apply for the transfer or cancellation of a domain name that is the same as or confusingly similar to their trade mark. 

Such applications come before administrative panels (of which I am one) who decide whether the domain name is the same or confusingly similar to a trade mark in which the complainant has rights,  whether the domain name holder has any rights or legitimate interests in the disputed domain name and whether the domain name was registered and is being used in bad faith.    If the panel finds in favour of the complainant on all those issues he or she can order the transfer of the domain name to the complainant or its cancellation,   The whole process is completed within a matter of weeks.   Usually, far less time than would be required for a claimant to issue and serve proceedings in the English courts and for the defendant to respond.   

The UDRP has been adopted by many other domain name registries including Wales (see my articles Welsh Top Leval Domain Names  12 April 2019 and Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  13 April 2019 NIPC Wales).  Many others such as Nominet regulates the ".uk" space and the Swiss domain name authority have similar policies.   To see how the process works just read my decision in Re D2022-1858 lancastersarchery.com.

Readers may be interested to learn that I do not confine myself to deciding domain name disputes.  I also advise and represent parties to such disputes.   As a panellist, I know exactly what the tribunal that will decide the dispute is looking for.   Having such insight, I can usually offer a much more successful and cost-effective service than most others.   Those who want to learn more can call me on +44 (0)20 7404 5252 or send me a message through my contact form.

11 Jun 2022

Auntie Jane's Trade Mark Tips No 10 - Passing Off

Jif Lemon
Author Paul Hurst Licence CC BY-SA 2.5 Source Wikimedia Commons

 






















Since 1876 it has been possible for suppliers to protect their brands by registering signs that distinguish their goods from those of all other suppliers as trade marks with the Intellectual Property Office.  There is, however, a much older judge-made protection known as the law of passing off.  Lord Oliver summarized that law as "no man may pass off his goods as those of another."

Lord Oliver said those words in a speech in the House of Lords in a case called Reckitt and Colman Products Ltd v Borden Inc. [1990] UKHL 12, [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] RPC 341, [1990] WLR 491.  For many years, the claimant company had sold lemon juice in squeezable lemon-size plastic containers like the one in the photo. They claimed that that packaging distinguished their juice from the juices of all other suppliers.  When the defendant tried to supply lemon juice in squeezable lemon shape plastic containers, the claimant complained that such packaging led consumers to buy the defendant's juice in the belief that it was the claimant's.  Proceedings were brought in the High Court which ended up in the House of Lords, then the highest court of appeal in the United Kingdom.

Lord Oliver was one of the judges who heard that appeal.  In deciding that case, he set out the elements that a complainant has to prove:
"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."   

There is considerable overlap between trade mark law and the law of passing off, Very often, brand owners sue for both causes of action.  There are, however. important differences that allow claims to be brought under one head but not under the other.

Probably the most significant of those differences is that a claimant has to prove that he or she has goodwill by reference to a mark, get-up or other indicia.  That usually requires evidence of sales and advertising under a mark over time.  By contrast, the owner of a registered mark may sue for infringement of that mark before he or she has made a single sale,  Conversely, it is sometimes possible to sue for passing off where the defendant has used a mark that cannot be registered as a trade mark.

Rights to bring actions for passing off can be important in trade mark law.  One of the grounds for opposing an application for the registration of a trade mark or invalidating a registered mark is that the use of the trade mark can be prevented by an action for passing off (see s.5 (4) (a) of the Trade Marks Act 1994).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.

23 May 2022

Auntie Jane's Trade Mark Tips: No. 9 Infringements

Rolls Building
Author Judicial Office UK Licence CC BY-SA 4.0 Source Wikimedia Commons

 










Jane Lambert

In my fourth trade mark tip, "What is a Trade Mark?" I wrote that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is the function of trade marks.

There are three ways in which that function can be interfered with:-

The first is by using a sign that is identical to the mark in relation to goods or services that are identical to those for which the mark is registered.  That is barn door counterfeiting,  There is no need to show that anyone is deceived or confused,  It is actionable under s.10 (1) of the Trade Marks Act 1994.

The second way is to use a sign that is identical or similar to the mark in respect of goods or services that are the same as or similar to those for which the mark was registered.  Liability arises where there is a likelihood that the public will be confused because the sign is the same as or similar to the mark and the goods or services are the same as or similar to those for which the mark was registered.  Such likelihood should include the likelihood of association with the trade mark.  That is actionable under s,10 (2) of the Act.

The third is to use a sign that is the same as or similar to a mark that has a reputation in the UK.  It does not matter whether the goods for which it is used and the same or similar to those for which the mark is registered.  An action arises if the use to which the sign is put takes unfair advantage of or is detrimental to the distinctive character or repute of the mark without due cause.  That is actionable under s. 10 (3).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.