(*** Superseded by WIPO Overview 3.0 ***)
Decision-making authority under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP) lies exclusively with the appointed panels. To assist awareness of their views on certain questions that commonly arise in proceedings under the UDRP, the WIPO Arbitration and Mediation Center has produced the following informal overview of panel positions on key procedural and substantial issues. Decision references supporting each line of opinion are included, with over 100 decisions from over 80 different UDRP panelists listed.
While some of the listed issues arise only infrequently, all of them are, or are perceived to be, relevant to the operation of the UDRP. On most of these issues, consensus or clear majority views have developed. Certain other questions continue to attract a diversity of views. The Center’s identification of questions and evaluation of opinions is based on the 7,000 UDRP cases it has administered through February 2005. Broad information on all views is available from the Center’s online Legal Index of WIPO UDRP Panel Decisions, as well as from the full posting of all decisions .
This overview is created in recognition of the need that has been expressed to identify, as much as possible, consensus among UDRP decisions, so as to maximize the consistency of the UDRP system. It should be understood that, with UDRP decisions covering a multitude of facts and arguments, genuine differences of opinion may be difficult to avoid on particular issues, all the more so where panelists and parties come from a multitude of jurisdictions. However, it is hoped that this update on the UDRP experience will be found helpful by identifying views expressed by panels and providing decisions which help to put those views in context.
While predictability remains a key element of dispute resolution systems, neither this informal overview nor prior panel decisions are binding on panelists, who will make their judgments in the particular circumstances of each individual proceeding. Also, it remains the responsibility of each case party to make its own independent assessment of decisions relevant to its case. In particular, parties should note that the present overview cannot serve as a substitution for each party’s obligation to argue and establish its case under the UDRP.
The idea of this overview was welcomed by the WIPO Domain Name Panelists Meeting convened in Geneva in October 2004. The contents have been informally reviewed by a number of the most experienced WIPO panelists, who have also supported the public dissemination of this overview. The Center, in consultation with its panelists, will make an effort to update this document with relevant future panel decisions.
The Center is profoundly grateful to all WIPO panelists for the internationally recognized contributions which they have made and continue to make to the functioning of the UDRP as a time and cost efficient mechanism for the resolution of Internet domain name disputes.
QUESTIONS
UDRP Policy
UDRP Rules
WIPO Supplemental Rules
1. First UDRP Element
1.1 Does ownership of a registered trademark to which the domain name is confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
1.2 Is the content of a web site relevant in determining confusing similarity?
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
1.5 Can a complainant show rights in a geographical term or identifier?
1.6 Can a complainant show rights in a personal name?
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
1.8 Does a trademark licensee or a related company to a trademark holder have rights in a trademark under the UDRP?
2. Second UDRP Element
2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic word(s)?
2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
2.5 Can a fan site constitute a right or legitimate interest in the disputed domain name?
3. Third UDRP Element
3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)
3.3 What constitutes a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name?
3.4 Can constructive notice form a basis for finding registration and/or use in bad faith?
3.5 What is the role of a disclaimer on the web page of a disputed domain name?
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether domain name was registered in bad faith?
4. Procedural Questions
4.1 What deference should be owed to past UDRP decisions dealing with similar factual matters and legal issues?
4.2 Can a panel accept an unsolicited supplemental filing?
4.3 What is the proper language of the proceeding?
4.4 Under what circumstance should a refiled case be accepted by a panel?
4.5 Can a panel perform independent research when reaching the decision?
4.6 Does the failure of the respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
DISCUSSION
1. First UDRP Element
1.1 Does ownership of a registered trademark to which the domain name is confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
Consensus view: If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.
Relevant decisions:
Uniroyal Engineered Products, Inc. v. Nauga Network Services D2000-0503,Transfer
Thaigem Global Marketing Limited v. Sanchai Aree D2002-0358, Transfer
Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano D2003-0661, Transfer
However: In certain, highly limited circumstances, a panel may examine the circumstances of trademark registration to determine whether the registration satisfies UDRP requirements. Trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) may not always be owed the same deference as examined registrations.
Relevant decisions:
Lion Country Supply, Inc. v. J. Katz D2003-0106, Transfer
PC Mall, Inc. v. Pygmy Computer Systems, Inc. D2004-0437, Transfer
Similar issues may apply, in the context of the second UDRP element, to trademark registrations made by the respondent:
Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" D2000-0847, Transfer
1.2 Is the content of a web site relevant in determining confusing similarity?
Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.
Relevant decisions:
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic D2000-1698, Transfer
Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd. D2001-0110, Transfer
Dixons Group Plc v. Mr. Abu Abdullaah D2001-0843, Transfer
AT&T Corp. v. Amjad Kausar D2003-0327, Transfer
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
Majority view: A domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.
Relevant decisions:
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale D2000-0662, Transfer
A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen D2001-0900, Transfer
Berlitz Investment Corp. v. Stefan Tinculescu D2003-0465, Transfer
Wachovia Corporation v. Alton Flanders D2003-0596 among others, Transfer
Minority view: A domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.
Relevant decisions:
Lockheed Martin Corporation v. Dan Parisi D2000-1015, Denied
McLane Company, Inc. v. Fred Craig D2000-1455, Denied
America Online, Inc. v. Johuathan Investments, Inc., and Aollnews.com D2001-0918, Transfer, Denied in Part
1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.
Relevant decisions:
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer
Iogen Corporation v. Iogen D2003-0544, Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
1.5 Can a complainant show rights in a geographical term or identifier?
Consensus view: The report of the Second WIPO Internet Domain Name Process declined to specifically extend protection to geographical terms under the UDRP. Some geographical terms however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark. Normally this would require the registration of the geographical term as a trademark.
Relevant decisions:
Kur- und Verkehrsverein St. Moritz v. StMoritz.com D2000-0617, Denied
Skipton Building Society –v. Peter Colman D2000-1217, Transfer
FC Bayern München AG v. Peoples Net Services Ltd. D2003-0464, Transfer
BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi D2004-0717, Transfer
However: It is very difficult for the legal authority of a geographical area to show unregistered trademark rights in that geographical term on the basis of secondary meaning.
Relevant decisions:
City of Hamina v. Paragon International Projects Ltd D2001-0001, Denied
Brisbane City Council v. Joyce Russ Advertising Pty Limited D2001-0069, Denied
Land Sachsen-Anhalt v. Skander Bouhaouala D2002-0273, Denied
1.6 Can a complainant show rights in a personal name?
Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.
Relevant decisions:
Julia Fiona Roberts v. Russell Boyd D2000-0210, Transfer
Jeanette Winterson v. Mark Hogarth D2000-0235 among others, Transfer
Dr. Michael Crichton v. In Stealth Mode D2002-0874, Transfer
However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.
Relevant decisions:
Israel Harold Asper v. Communication X Inc. D2001-0540 among others, Denied
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa D2003-0248, Transfer
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314,Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786, Transfer
Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer
1.8 Does a trademark licensee or a related company to a trademark holder have rights in a trademark under the UDRP?
Majority view: In most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.
Relevant decisions:
Telcel, C.A. v. jerm and Jhonattan Ramírez D2002-0309, Transfer
Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions D2003-0624, Denied
Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington D2003-0796, Transfer
Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc. D2003-1027 <shperion.com>, Transfer
Minority view: A complainant that holds a non-exclusive trademark license does not have rights in a trademark under the UDRP.
Relevant decisions:
NBA Properties, Inc. v. Adirondack Software Corporation D2000-1211, Denied
2. Second UDRP Element
2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Relevant decisions:
Croatia Airlines d.d. v. Modern Empire Internet Ltd. D2003-0455, Transfer
Belupo d.d. v. WACHEM d.o.o. D2004-0110, Transfer
2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?
Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name "apple" if it uses it for a site for apples but not if the site is aimed at selling computers or pornography).
Relevant decisions:
402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie D2000-1223, Transfer
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin D2002-0635, Transfer
Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset D2002-1058, Transfer
Owens Corning Fiberglas Technology, Inc v. Hammerstone D2003-0903, Transfer
However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.
Relevant decisions:
Allocation Network GmbH v. Steve Gregory D2000-0016, Denied
Porto Chico Stores, Inc. v. Otavio Zambon D2000-0270, Denied
Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. D2000-1005, Denied
Gorstew Limited v Worldwidewebsales.com D2002-0744 among others, Denied
2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
Relevant decisions:
Oki Data Americas, Inc. v. ASD, Inc. D2001-0903, Denied
Experian Information Solutions, Inc. v. Credit Research, Inc. D2002-0095 among others, Transfer
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.
Relevant decisions:
Motorola, Inc. v. NewGate Internet, Inc. D2000-0079, Transfer with Dissenting Opinion
For cases dealing with a non-contractual relationship see:
DaimlerChrysler A.G. v. Donald Drummonds D2001-0160, Denied (with dissent)
Philip Morris Incorporated v. Alex Tsypkin D2002-0946, Transfer
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent D2004-0481, Denied
2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain.
See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico D2000-0477 among others, Transfer
In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.
Relevant decisions:
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Myer Stores Limited v. Mr. David John Singh D2001-0763, Transfer
Triodos Bank NV v. Ashley Dobbs D2002-0776, Transfer
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez D2003-0166, Transfer
Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. D2004-0136, Transfer
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.
Relevant decisions:
Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers D2000-0190, Denied
TMP Worldwide Inc. v. Jennifer L. Potter D2000-0536, Denied
Howard Jarvis Taxpayers Association v. Paul McCauley D2004-0014, Denied
Imposing further conditions as to domain name and use:
Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign D2004-0206, Denied
2.5 Can a fan site constitute a right or legitimate interest in the disputed domain name?
This section only deals with fan sites that are clearly active and non-commercial. There are many UDRP cases in which the respondent claims to have an active non-commercial fan site but the panel decides otherwise.
See Helen Fielding v. Anthony Corbert aka Anthony Corbett D2000-1000, Transfer
View 1: An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.
Relevant decisions:
Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross D2001-1042, Denied
2001 White Castle Way, Inc. v. Glyn O. Jacobs D2004-0001, Denied
View 2: Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity. In particular, where the domain name is identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet.
Relevant decisions:
David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla D2000-1459, Transfer
Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S. and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S. D2002-0726, Transfer
3. Third UDRP Element
3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182, Denied
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.
Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669, Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320, Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845, Transfer
3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)
Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Relevant decisions:
Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003, Transfer
Jupiters Limited v. Aaron Hall D2000-0574,Transfer
Ladbroke Group Plc v. Sonoma International LDC D2002-0131 among others, Transfer
On the interpretation of paragraph 4(b)(iv) of the UDRP:
Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting D2001-1391, Denied
3.3 What constitutes a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name?
Consensus view: A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks, however the registration of two domain names in the same case is not generally sufficient to show a pattern.
Relevant decisions:
Home Interiors & Gifts, Inc. v. Home Interiors D2000-0010 among others, Transfer
Telstra Corporation Limited v. Ozurls D2001-0046 among others, Transfer
3.4 Can constructive notice form a basis for finding registration and/or use in bad faith?
Most panels have declined to introduce the concept of constructive notice into the UDRP. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.
Relevant decisions:
Toronto Star Newspaper Ltd. v. Elad Cohen DTV2000-0006, Denied
Kate Spade, LLC v. Darmstadter Designs D2001-1384, Transfer
Alberto-Culver Company v. Pritpal Singh Channa D2002-0757, Denied
Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic D2002-0772, Transfer
The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands D2003-0305, Transfer
3.5 What is the role of a disclaimer on the web page of a disputed domain name?
Consensus view: The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.
Relevant decisions:
Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna D2000-0869, Transfer
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic D2000-1698, Transfer
Besiktas Jimnastik Kulubu Dernegi v. Mehmet Tolga Avcioglu D2003-0035, Denied
Pliva, Inc. v. Eric Kaiser D2003-0316, Transfer
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
Consensus view: Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner launches a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also the legal criteria for showing bad faith directly specifies that an offer for sale can be evidence of bad faith.
Relevant decisions:
CBS Broadcasting, Inc. v. Gaddoor Saidi D2000-0243, Transfer
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. D2000-1525 among others, Transfer
McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd D2004-0078, Transfer
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.
Relevant decisions:
Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI)
D2001-0782, Denied
PAA Laboratories GmbH v. Printing Arts America D2004-0338, Denied
4. Procedural Questions
4.1 What deference should be owed to past UDRP decisions dealing with similar factual matters and legal issues?
Consensus view: The UDRP does not operate on a strict doctrine of precedent. However panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties.
Relevant decisions:
Geobra Brandstätter GmbH & Co KG v. Only Kids Inc D2001-0841 among others, Transfer
Fresh Intellectual Properties, Inc. v. 800Network.com, Inc. D2005-0061 <800-flowers.com>, Transfer
PAA Laboratories GmbH v. Printing Arts America D2004-0338, Denied
4.2 Can a panel accept an unsolicited supplemental filing?
Majority view: While panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the complaint or response. Panelists who accept a supplemental filing from one side often allow the other party the opportunity to file a reply to the supplemental filing.
Relevant decisions:
Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner D2001-1447, Transfer
AutoNation Holding Corp. v. Rabea Alawneh D2002-0058, Denied
De Dietrich Process Systems v. Kemtron Ireland Ltd. D2003-0484, Transfer
Minority view: Unless the panel specifically solicits a supplemental filing, it will not consider a supplemental filing in its decision.
Relevant decisions:
Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon D2000-1440, Denied
On when a panel should request a supplemental filing:
Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA D2000-1376, Transfer
Auto-C, LLC v. MustNeed.com D2004-0025, Transfer
4.3 What is the proper language of the proceeding?
Consensus view: The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise.
Relevant decisions:
Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados D2003-0247 <telsra.com>, Transfer
Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber D2003-0251 among others, Denied, Transfer in part
Advanced Magazine Publishers Inc. v. Computer Dazhong D2003-0668, Transfer
However: In certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.
Relevant decisions:
L’Oreal S.A. v. Munhyunja D2003-0585, Transfer
Deutsche Messe AG v. Kim Hyungho D2003-0679, Transfer
4.4 Under what circumstance should a refiled case be accepted by a panel?
Consensus view: A refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.
Relevant decisions:
Creo Products Inc. v. Website In Development D2000-1490, Transfer
Maruti Udyog Ltd. v. maruti.com D2003-0073, Transfer
AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer
4.5 Can a panel perform independent research when reaching the decision?
Consensus view: A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.
Relevant decisions:
Société des Produits Nestlé SA v. Telmex Management Services D2002-0070, Transfer
Hesco Bastion Limited v. The Trading Force Limited D2002-1038, Transfer
Howard Jarvis Taxpayers Association v. Paul McCauley D2004-0014, Denied
4.6 Does the failure of the respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: The respondent’s default does not automatically result in a decision in favor of the complainant. Subject to the principles described in 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
Relevant decisions:
The Vanguard Group, Inc. v. Lorna Kang D2002-1064, Transfer
Berlitz Investment Corp. v. Stefan Tinculescu D2003-0465, Transfer
Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan D2004-0383, Denied