Confusion is a basic element in both cybersquatting and trademark infringement. It appears twice in the UDRP; once in paragraph 4(a)(i) in the adjectival phrase "confusing similarity", and once in paragraph 4(b)(iv) in the phrase "likelihood of confusion." Each use of the distinctive phrases is directed to a different observer. More of this in a moment. The first relates to standing; the second to infringement. Unless a party has standing it can have no actionable claim.
One of the differences between the Uniform Domain Name Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act is the burden for establishing standing to maintain an administrative proceeding or commence an action. Under the UDRP a trademark owner can proceed if its mark is in existence prior to filing the complaint even though its trademark postdates registration of the domain name. This is a panel made rule that has solidified into precedent. It doesn't have to be this way, but it's rarely challenged.
In contrast, the ACPA requires plaintiffs to show they have registered or unregistered marks predating the registration of the domain name. This is a statutory not a judge made requirement. The "identical or confusingly similar" element is the same as the UDRP but "the mark [has to be] distinctive [or famous] at the time of registration of the domain name." If a trademark owner has any actionable claim at all for a postdated mark it would have to rest on another legal theory than cybersquatting.
This difference in the jurisprudence of standing does not mean that owners of postdated marks have any hope of success under the UDRP but it does allow them to get to "first base," and apparently this is enough incentive to file UDRP complaints where they wouldn't dream of filing them in federal court. The question is, why do complainants file complaints that are certain to be denied? I have a couple of theories, neither particularly flattering. One is complainants' and counsels' unpreparedness for UDRP's evidentiary demands; the other (more outlandish still!) is that complainants and their counsel are under the spell of an illusion that because they have standing they have actionable claims. Although standing's a small matter in the scheme of things it is legitimate to ask why panelists continue following precedent on this issue.
But follow precedent they do, with predictable findings and generally, although not always, by issuing reverse domain name sanctions. Before moving to examples, some context. It's entirely likely that domain names identical or similar to trademarks may be confusing on a side-by-side comparison (an initial assessment based on a panelist's observation) even though there will be no likelihood of confusion (an ultimate conclusion based on proof of consumer confusion). This is true regardless of which party has priority.
But there's a conundrum: "likelihood of confusion" which is a weighty requirement in proving trademark infringement is less weighty in considering evidence under the UDRP where it is more akin to "likely to be confusing." Moreover, consumers are just as likely to be confused about "source, sponsorship, [and] affiliation [etc]" involving earlier registered domain names and later acquired trademarks as they would if owners had priority, but it's of no consequence because while confusion is likely when registrants have priority the domain name registrations are not unlawful.
Trademark owners are naturally upset because they believe (in being active in the marketplace) they have the better right to the corresponding domain names, and equate the "better right" to bad faith. But this not registrants' problem! In Starpixel Marketing LLC dba Vape Magazine v. Geoffrey Stonham, D2016-0773 (WIPO June 23, 2016) (<vapemagazine.com>) Complainant's application for a trademark was denied for the Principal Register and placed on the Supplemental Register. Even if it had been accepted on the Principal Register it would have postdated the registration of the domain name. In Emerton v. Peng Goh, Service Pro, D2016-0851 (WIPO June 27, 2016) (<emerton.com>) the mark also postdated the registration of the domain name. Both Complainants (the first represented by counsel and the second represented by "experienced counsel") chose to file complaints even though (in the words of the Emerton Panel) they "should have been aware of the prospective outcome if a decision was issued." As a result, the Panels "ha[d] no hesitation in finding [these] Complaint[s] amount[ ] to a case of reverse domain name hijacking."
Respondents in the above cases requested RDNH. To some panelists it makes a difference that a remedy has been demanded. Respondent did not request sanctions in Tip Vy Spots LLC Vy v. Super Privacy Service c/o Dynadot, D2016-0872 (WIPO June 29, 2016) (<reveel.com>) and the Majority decided against it because "we do not read the Response as expressly requesting such a finding. Inasmuch as proceedings under the Policy are adversarial and party-driven, we believe it is not up to the panel to make findings not expressly requested by a party." Whether respondents have to request RDNH is debatable; there's a split among panelists on this issue. A number of distinguished panelists have argued that panelists have the authority to sanction whether or not requested. I think this is the better view, but the ruling is discretionary.
While irritation in finding a desired domain name already taken may be understandable, commencing a proceeding to coerce a sale on more favorable terms — often referred to as "Plan B" when respondent counters complainant's offer with too-high a demand — violates the spirit of the UDRP and specifically the certification rule. Panels are alert to overreaching even when respondents fail to appear. The Oberweis Group, Inc. (Delaware Corporation) v. Tamar Pauley / Hampton Roads AR, D2016-0746 (WIPO June 2, 2016) (<thatburgerjoint.com>) and 4imprint, Inc. v. FOUR COLOR IMPRINTS , LTD., FA1605001674403 (Forum June 16, 2016) (<4imprints.com>).
The Panel in The Oberweis Group points out (an observation equally applicable to both cases) that,
[t]he major hurdle that Complainant faces in this case is the simple fact that Respondent registered the Domain Name six and a half years before Complainant ever began to use the THAT BURGER JOINT trademark in any manner. In such circumstances, it is impossible to conclude that Respondent actually had Complainant or its trademark in mind at the time he registered the Domain Name.
The temporal issue the Panel alludes to is addressed in Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") "Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?" The consensus view is that,
Generally speaking, (...) when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
In 4imprint, Complainant offered no evidence to support any claim that Respondent registered the disputed domain name in bad faith 14 years earlier. Neither, it should be noted, have any of these several Respondents used their domain names in bad faith. The common but frivolous argument is stated by Complainant in Coolside Limited v. Get On The Web Limited, D2016-0335 (WIPO April 26, 2016) (<trtl.com>). It complains that,
the Respondent has sat on the Domain Name since March 2000 and now offers it for sale at an inflated cost. The Complainant relies on the finding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that the passive holding of a domain name by a respondent amounted to the respondent acting in bad faith.
Not only does Complainant in <trtl.com> misunderstand UDRP, its counsel (presumably "experienced" although clearly not with this jurisprudence) also misreads the holding in Telstra. "Passive holding of a domain name" does not amount to respondents acting in bad faith unless,
it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law. (Telstra, paragraph 7(12)(v)).
In any event, the holding in <trtl.com> is correct because the domain name predated the trademark.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP