Complaints under the UDRP

Author WIPO Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

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 Name.  In 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 such, panels 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.  

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

Jif Lemon

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

 

Jane Lambert

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.

Geographical Indications after Brexit

Stilton Cheese

Author Dominik Hundhammer

Licence Creative Commons Attribution-Share Alike 3.0 unported

Source Wikipedia

Jane Lambert

According to the WIPO 

"A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production."

As I noted in Geographical Indications 27 May 2010 parties to the WTO Agreement are required to protect such signs by arts 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and art 10bis of the Paris Convention.

As I also noted in Geographical Indications HM government discharges those international obligations through trade mark law, the action for passing off and special EU legislation.  The EU legislation will cease to apply to the UK after 29 March 2019 except to the extent that it is preserved by s.2 and s.3 of the European Union (Withdrawal) Act 2018.

Paragraph 39 of the white paper on The future relationship between the United Kingdom and the European Union states:

"The UK will be establishing its own GI scheme after exit, consistent with the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). This new UK framework will go beyond the requirements of TRIPS, and will provide a clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK. The scheme will be open to new applications, from both UK and non-UK applicants, from the day it enters into force."

If the UK leaves the EU with a withdrawal agreement the legislation for this new scheme will be passed in the implementation period that will subsist between 30 March 2019 and 31 Dec 2020.

On 24 Sept 2018 the government published Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal setting out its proposals for protecting geographical indications if there is no withdrawal agreement:

"When we leave the EU we will set up our own GI schemes which will be WTO TRIPS compliant, broadly mirror the current EU regime and be no more burdensome to producers. Details to be explored in a public consultation include the UK GI logo and appeals process. The protections will be similar to those enjoyed now by UK GI producers, with all 86 UK GIs given new UK GI status automatically. The UK would no longer be required to recognise EU GI status. EU producers would be able to apply for UK GI status. We will be publishing guidance on the UK GI schemes in early 2019."

HMG expects the EU to continue to protect British products after Brexit but, should that not be the case, it advises producers to apply for GI protection as third country producers or the registration of their signs with the EU Intellectual Property Office as collective or certification marks,

Anyone wishing to discuss this article or geographical indications generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

AdWords and Trade Marks

Jane Lambert

Google AdWords and similar schemes with other search engines are a powerful way to promote a business as Rachael's Kitchen shows in her video which appears on Google's website.  They enable businesses to

"Be seen by customers at the very moment that they’re searching on Google for the things you offer. And only pay when they click to visit your website or call you."

Advertisers sponsor the keywords that they believe to be relevant to their offer.  Whenever a customer types those keywords into the search engine their ad appears on the search engine research page. If the customer clicks the "Call" button or the link to the advertiser's website, the advertiser pays a fee to the search engine operator.  If more than one firm wants to sponsor the same search term an automated auction takes place and the one that is prepared to pay the most gets the best spot on the results page.

That is called "pay-by-click" bidding and in the overwhelming majority of cases it is perfectly lawful. But there may be trouble if you sponsor one or more of your competitor's trade marks as a keyword for your product.  Both sides did that in a case called Victoria Plum Ltd, v Victorian Plumbing Ltd, that came before Mr Justice Henry Carr a few weeks ago.

Victoria Plum Ltd, which sells bathroom equipment, had registered the words VICTORIA PLUM as a trade mark for all sorts of goods and services.  Victorian Plumbing Ltd., which ran a similar business, had bid for the following search terms:

a) "victoria plumb" / "victoriaplumb";
b) "victoria plum"/ "victoriaplum";
c) "victorian plumb" / "victorianplumb";
d) "victorian plum" / "victorianplum";

When those words were typed into Google's search engine an advertisement for Victorian Plumbing with a link to their website would appear on the page that displaying the results of the search. Victoria Plum also bid for Victorian Plumbing's name as a search term but on a much smaller scale.

Victoria Plum sued Victorian Plumbing for trade mark infringement and Victorian Plumbing counterclaimed against Victoria Plum for passing off. The action came on before Mr Justice Henry Carr who decided for Victoria Plum on the infringement claim but Victorian Plumbing on the counterclaim for passing off. If you want to know the arguments that were used and the details of the judgment I have written a full case note for my NIPC Law blog (see Plummy 25 Nov 2016).

So the moral of this story is to take care when bidding for search terms. It may not be necessary to carry out a trade mark search on every keyword but try to avoid using the registered trade marks or corporate names of your direct competitors,

if you want to discuss this case, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.