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UDRP Defense
(or, All the things that you have to prove):
As discussed in the UDRP
summery, there are three elements, or prongs,
to a UDRP case. They can be summarized as, "Confusion," "Rights,"
and "Bad Faith." As discussed below, it is a misconception to believe that
the Complainant must prove all three elements. All the Complaint must do is make
some form of assertion for each of the three elements. That assertion can be as simple
as directly quoting the UDRP phrasing; without providing any evidence whatsoever.
This is what I call, "shifting the onus of proof." This is a frequently
used tactic in cases where the Complainant has no substantial evidence and sometimes
even when the Complainant has plenty of evidence.
The Complainant's goal is to steal your domain as cheaply as possible. A no-evidence
tactic is as quick and simple as putting the appropriate names in a boilerplate complaint
and sending it in. This shifts the onus of proof to the Respondent. In a majority
of the cases, the Respondent does not reply and the domain is transferred. If the
Respondent does reply, everything in the Response can be used as evidence against
the Respondent. The National Arbitration Forum (NAF) allows an infinite number of
additional submissions that the Complainant can use to beat domain name out of the
the Respondent. It becomes an expensive and extended game of, "yes you did"
and "no I didn't." With every cycle, the Respondent is liable to accidentally
open new avenues of attack, inadvertently admit something or otherwise sink themselves
into a deeper hole.
Interestingly, the goal for the Respondent is not to beat the Complainant resoundingly
about the head, neck, face and chest, but rather to simply answer to the specific
charges leveled in the complaint. Defending against statements that where not made
sounds idiotic on the surface, but you would be surprised how tempting the use of
"every available avenue of defense" is. If the complaint did not accuse
you of bad faith don't go into all the ways you didn't demonstrate bad faith, simply
say, "the complaint did not assert, or provide any evidence of, bad faith."
You've just shifted the onus of proof back onto the Complainant.
Presented here is each prong of a UDRP complaint and some possible defensive approaches.
- Confusion:
- The domain name is identical or similar to and
confused by target customers of both parties with, the Complainant's mark...
Panels have historically found that just about anything
can be considered similar to just about anything else [i]. If the marks
are considered similar and the Respondent does not further challenge, confusion is,
in the vast majority of cases, assumed.
Panelists have frequently used what I call a "cascade
of findings."[ii] The logic of this cascade is as follows: the Panel finds
that the disputed domain name is confusingly similar to the Complainant's trademark
(Confusion); therefore the Respondent could not have a valid use of the domain (Rights)
other than to disrupt the trademark holder's business (Bad Faith.) In other words,
instead of a multi-pronged test of confusion, rights and bad faith; each with their
own set of tests, the Complainant only has to prove similarity to win.
It should be clear then that you cannot just blow
off fighting this prong, even though, as a Respondent, you are facing potentially
insurmountable resistance. At the very least, you have to cast enough of a shadow
of doubt on this prong to prompt the Panelist to consider your other arguments. Many
Panelists don't want to set new precedents; it opens them up to criticism and reversal.
They would rather dismiss your case based on your other arguments than risk allowing
dangerous arguments to enter the body of precedent. So place a few dangerous arguments
in this prong.
To fight a claim of confusingly similar, it is probably
not fruitful to base your defense on the term, "similar" but rather attack
the term, "confusion." Confusion has a long history in U.S. IP hearings
and has established significant precedent, tests and guidelines .
Since the Arbitration Panel has shown absolute reluctance
to be bound by any tests, precedents and guidelines established within other forums
[iii], you don't have the full use of these tools such as Sleekcraft [iv]
to help disprove confusion. But if your domain is within U.S. jurisdiction (.COM,
.NET, .ORG, .US, etc) you can mention that it would be prudent and valid for the
Panelists to consider, as a guideline, established U.S. precedent (such as Sleekcraft
or Laches.) Remember, your goal here is not so much as to win on this prong as it
is to stop a cascade finding.
- The Complainant has sufficient rights to that
mark as it pertains to this proceeding...
The Complainant must prove that they have more rights
to a mark than you. The primary way to establish increased rights is to register
a mark with the pertinent authority. For .COM, .NET and .ORG top-level-domains, that
authority is the U. S. Patent and Trademark Office. If you have successfully registered
the disputed domain name prior to the dispute, you win. If the Complainant has not
registered the mark prior to the dispute, you win. If a mark was registered in a
country other than the one with the disputed top-level domain name's jurisdiction,
there is still a good chance to win. But for this discussion, let's assume the mark
was registered by the Complainant, and not the Respondent with the USPTO and the
domain is within U.S. jurisdiction.
A good start would be to determine if their mark
is common (i.e. diluted.) Are there other legitimate businesses that are using their
trademark? Are there other web sites using the mark? If so, they have not shown diligence
in protecting their mark. Is their mark generic or descriptive? Is it part of the
common english language? If so, you can state that the mark is indistinct and only
has rights where it is distinct, i.e. only within the Complainant's specific industry.
Is there mark so famous that if your average person on the street hears it, they
will only think of the goods or services offered by the Complainant? If not, they
have a diluted mark with severely limited rights.
Have you had the domain for five or more years prior
to the first notification of the dispute? A trademark must be protected throughout
it's entire lifetime. That protection must be diligent and timely. The Doctrine
of Laches limits the amount of time that
can pass before a trademark holder can no longer raise an infringement complaint.
After a sufficiently long period of time, any rights the trademark holder has against
the infringement can be thought to be expired. You must prove, however, that the
Complainant has known of your use of the domain name for most, if not all, of the
time you've owned it. Allowing Laches into a UDRP complaint is the kind of "dangerous"
argument a weak Panelist will not want to touch.
- Rights:
- Before any notice to the Respondent of the dispute,
the Respondent has not used, or shown demonstrable preparations to use, the domain
name in connection with a bona fide offering of goods or services...
This prong applies only to commercial, for-profit
uses of the domain name. An oversimplification would be, was there a web site on
the domain? If so, then the key term is, "bona fide."
The legal definition of "bona fide" does not mean "actual," but
rather, "brought in good faith." It has been shown in some findings that
offering the domain for sale to the general public is a bona fide offering of goods
sufficient to defeat this claim. Unfortunately, it has more often been shown that
offering a domain for sale is not a bona fide offering of goods and is proof of bad
faith below.
Trying to prove "demonstrable preparations
to use" is pretty close to impossible. If you circulated a formal business plan
that was built around the domain name, or at least specifically mentions the domain
name as a key part to the plan, you could use that, along with dated statements from
those you circulated the plan to, to prove preparations. Talking to someone once
about it does not prove much of anything. Even with a formal business plan, if the
web site was unused or had "under construction" on it for more than a year,
you will not have shown "demonstrable preparations to use." If you need
to show preparations, you didn't read the "Prevention"
part of this site.
- The Respondent has not been commonly known by
the domain name...
The key phrase here is "commonly." Which
group would or should recognize you by your domain name is the crux of the argument.
That group is probably the target audience of the goods or services offered in connection
to the domain. If, for example, you are offering a blog on how bad Microsoft sucks,
the target audience is anyone who want's an opinion about Microsoft: a very broad
audience. If you are offering tee shirts in connection to a conference of medicinal
leech farmers held on Sept 21 in Burbank, ND, your target audience are the attendees:
a much more limited group. You have a chance at proving that the leech farmers know
you by the domain name, but no chance to prove everyone who wants an opinion about
Microsoft makes the connection. To defend this claim, try to narrow the target audience/customer
to as small a group as possible and get as many statements as possible from that
group. The statements should include:
- The date
- Their name and contact info
- That they connect your business or noncommercial
offerings (and not just you) with the domain name. If the domain is connected to
a business, be sure the terms, "business," your company's name and the
domain name are used in the same sentence.
- That they have done business with your company
or reviewed information through the domain name and how long they have had the relationship
- Their signature (which generally means printed
of FAXed statements)
This clause allows the Respondent to add proof of industry
goodwill that has been built up in connection to the domain name. This proof of goodwill
is very useful in prong 3, "Bad Faith." If you are known by your target
consumer/audience, and they continue to do business with your company or read your
blog, you have built goodwill.
- The Respondent is not making a legitimate noncommercial
or fair use of the domain name, and intends commercial gain by misleadingly diverting
consumers or tarnishing the mark at issue.
This is the pertinent test for the "Rights"
prong for those who are not using the domain name in connection with a commercial
interest, i.e. not making money. The critical term for not-for-profit site operators
to prove is "legitimate."
A note about the U. S. Constitution's first amendment
and freedom of speech: in general, it is the message that is protected, not the manner
in which you present the message. For example, loss of the domain name, microsoft-sucks.com,
would not prevent you from criticizing Microsoft. In other words, you are perfectly
capable of criticizing Microsoft in a public forum without infringing on it's trademark.
In other, other words, freedom of speech does not give you the right to infringe
on a trademark.
If this is part of the complaint and the domain
name is being used in connection with a commercial interest, this can be a very difficult
claim to defend. There are three parts to this claim:
- you are intentionally misleading consumers of the
Complainant to your site
- you are receiving some form of gain by this misleading,
and
- that you are tarnishing the Complainant's mark
There are many ways to demonstrate an intention to
mislead, such as, describing or mentioning the CP's products or services anywhere
on your site, including the META tags. You'll need to show that none of these things
are present and that if they are, they where unintentional.
Compensation can be tangible or intangible. There
doesn't just have to be money involved in order to be said to have "gained"
by the mislead. You may gain by a perceived affiliation or endorsement. You may gain
by increasing your fame. A good way to show, at least partially, that you have not
gained is to show that there is a complete dissimilarity between your customers and
those of the CP.
A claim of tarnishing the mark is pretty close to
impossible to defend against. Your best defense is to show, somehow, that you never
knowingly intended to tarnish their mark.
- Bad Faith:
- Circumstances indicating that the Respondent
has registered or 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...
To win this claim, the Complainant must show that
you registered the domain name primarily to harm the Complainant. Proving or disproving
your primary motivation for any act is a difficult thing. The Panel therefore accepts
any evidence of harm to the Complainant as proof that your primary motivation
was to harm the poor trademark holder. The most often used evidence of this harm
is that the Respondent requested more than $15 for the domain (or whatever the registrar
charged you.)
This is the main trap that a Complainant will try
to snare the Respondent with in the initial communication. One misstep at that stage,
and this entire prong is lost. Some ways to defend against this claim are:
- Follow the guidelines layed out in the "Prevention" section of this site, such as documenting your intention when
you registered the domain.
- Follow the guidelines layed out in the "Selling" section of this site, such as never make the first
offer.
If you've followed the guidelines above, you've
got nothing to worry about from this claim.
What if you didn't do any of the guidelines, that time is over now and you made a
few mistakes?
Optimistically, if you've owned the domain name for more than two years, you can
try to claim that you have invested a significant amount of time, energy and money
building goodwill within the industry that your site relates to. You can try and
say that rebuilding this goodwill under a new domain name will cost a significant
amount of time, energy and money; and therefore you are justified in asking more
than the documented out-of-pocket expenses. You now of course have to prove that
the industry goodwill you built is worth the cash you asked for. Get as many documented
expenses as possible together into a schedule. Every little thing such as the expense
involved in rewriting your hyperlinks, recoding your CGIs, reprinting your business
cards, etc. helps.
Realistically, unfortunately, you're pretty hosed. You should probably get a highly
qualified and experianced IP attorney with UDRP experience to represent you. It will
probably be difficult for you to find an attorney to represent you, though, as you've
already lost a good chunk of the case.
- The Respondent has 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 the Respondent has engaged in
a pattern of such conduct...
Establishing "a pattern of such conduct"
only requires that the Complainant show that you've registered numerous domains.
If these domains are also infringments or semi-infringements, you've lost this prong.
If you haven't registered a lot of domains, this
one is pretty easy to defend. Print a screen shot of the Complainant's web site,
especially if it's identical to the trademark in question. Then go to a popular web
search engine, such as google and type in the trademark in question. If your site
is not listed, and theirs is, or at least theirs is listed above yours, you've not
prevented them from reflecting their trademark. Print a screen shot of the search
results. If there is a web site identical to the trademark, but it's not owned by
you or the Complainant, this is a good piece of evidence supporting any claims of
dilution and indilligence you raise in the "Confusion" prong.
- The Respondent has registered the domain name
primarily for the purpose of disrupting the business of a competitor...
To defend against this, you simply need to prove
you are not a competitor of the Complainant. If you're noncommercial, this one is
a given.
- By using the domain name, the Respondent has
intentionally attempted to attract, for commercial gain, Internet users to the Respondent's
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
the Respondent's web site or location or of a product or service on your web site
or location.
Having a domain name that is judged to be confused
with the Complainant's trademark is proof that the consumer is also confused about
whether the Complainant is the originator, sponsor, affiliate, or endorsor of your
site. Therefore the key to this claim is the term, "gain." Commercial gain
does not only refer to money. An increase of public awareness is a commercial gain.
Someone complementing or insulting your site is a commercial gain. The old actors
saying, "whether they're saying good or bad things about you is no worry; when
they stop talking about you at all is when you need to worry" illustrates the
point.
If you've never had advertisements, linked to a competitor of the Complainant in
exchange for some form of consideration or done reciprocal hyperlinking, a good defense
is to prove that, since you are not in the same industry as the Complainant, you
have realized no commercial gain.
Another good approach is to try and shift the onus
of proving you have made commercial gain onto the Complainant.
Footnotes:
[i] "flavajeans.com" was found to be confusingly similar
to "PHAT" and "usedcaterpillarspecialistauction.com" was found
to be confusingly similar to "CAT" or "CATERPILLAR."
[ii] Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar.
31, 2001), America Online, Inc. v. David FA 0202000104980 (Nat Arb. Forum April 10,
2002), Nike, Inc. v. Khoo Lye FA 0110000100180 (Nat Arb. Forum November 16, 2001).
As well as these other NAF cases: 100493, 100568, 100572, 100647, 100651, 100680,
100707, 100756, 101157, 101535, 101579, 101819, 101821, 101822, 102167, 102463, 102481,
102493, 102513, 102516, 102517, 102614, 102643, 102803, 102809, 102810, 102814, 102820,
102842, 102861, 103128, 103368, 103811, 103870, 103880, 103883, 103925, 103968, 104089,
104186, 104592, 104947, 104983, 104985, 105182, 105210, 105214, 105735, 105775, 105776,
97345, 97762, 97849, 98443, 99084, 99482, & 99583
[iii] "The Respondent is under the mistaken impression that
this Panel is bound by US trademark law when determining the issue of confusing similarity.
Such is not the case. ... Panels have consistently held that strict application of
the confusion criteria arising out of national trademark laws is not appropriate,
and that a broader notion of confusion should be used in these proceedings."
Broadcom Corporation v. Michael Becker, FA 98819 (Nat Arb. Forum October 22, 2001)
[iv] AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th
Cir. 1979)
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