There are three kinds of UDRP disputes, those that are out-and-out cybersquatting, those that are truly contested, and those that are flat-out overreaching by trademark owners. In the first group are the plain vanilla disputes; sometimes identical with new TLD extensions ( and ; sometimes typosquatting ( and ); other times registering dominant terms of trademarks plus a qualifier ( and ). Respondents in this group have no defensible positions and invariably default in appearance; in essence the registrations are opportunistic and mischievous and clearly in breach of respondents' warranties and representations. This group comprises by far the largest number of defaults, between 85% and 90%.
The second group consists of complainants whose trademarks have priority of use in commerce (they have to have priority otherwise there can be no bad faith registration) but either 1) had no reputation in the marketplace when the domain name was registered, 2) parties are located in different markets or countries, so respondents can plausibly deny knowledge of the marks, or 3) the terms are generic or descriptive, thus capable of being independent of any reference to trademark values. Examples are in Circus Belgium v. Domain Administrator, Online Guru Inc., D2016-1208 (WIPO September 5, 2016) (<circus.com>); Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC, D2016-1199 (WIPO August 31, 2016) (<loading.com>) and Hopscotch Group v. Perfect Privacy LLC/Joseph William Lee, D2015- 1844 (WIPO January 20, 2016) (<hopscotch.com>).
In Javier Naarvaez, the Panel notes for example that the dominant word element of the trademark is descriptive, and as such
a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark.
The underlying policy in registering domain names that by happenstance correspond to trademarks is they are not per se unlawful without proof respondents registered them with complainants' trademarks in mind, and for this reason there's no breach of registrants' warranties and representations. Although Respondents in the cited disputes prevailed, the Panels denied reverse domain name hijacking in part because weak cases in this group but not the third group do not rise to the level of proof necessary to support sanctions.
In Javier Narvaez the Panel notes that "Respondent has plausibly denied that it knew of the Complainant when Respondent registered the Disputed Domain Name [and there's] no evidence that in making the registration Respondent targeted Complainant or Complainant's trademark."
Because arbitration is different from litigation, defaulting respondents in the second group can be exonerated of bad faith if the circumstances support good faith registration. Bigfoot Ventures LLC v. Shaun Driessen, D2016-1330 (WIPO August 6, 2016) (<bubblingbeats.com>) (RDNH denied because of the unusual combination of words). Complainants can even be charged with reverse domain name hijacking when respondents default; that is, sanctions don't have to be requested (although some panelists believe they do have to be!). Cyberbit Ltd. v. Mr. Kieran Ambrose, Cyberbit A/S, D2016-0126 (WIPO February 26, 2016) (<cyberbit.com>).
The third group is trademark owners whose rights postdate the registrations of the accused domain names. They are the most troubling because they have no actionable claim under the UDRP or the ACPA for cybersquatting and their complaints are essentially abuses of process. It would be reasonable to expect panelists to hold these complainants accounting for abuse but there is a split among panelists on sanctioning complainants. The Respondent in Cognate Nutritionals, Inc. v. Martin Zemitis / Entria.com, FA160200 1660055 (Forum March 17, 2016) (<fuelforthought.com>) not only carried on a fueling business but had priority of right for the domain name. However, the Panels in Julie Wampler v. Name Administration, Inc., D2014-1586 (WIPO November 27, 2014) (<tablefortwo.com>) and (by Majority) in Tip Vy Spots LLC Vy v. Super Privacy Service c/o Dynadot, D2016-0872 (WIPO June 29, 2016) (<reveel.com>) denied RDNH for different reasons.
In Julie Wampler Complainant "argues that, although the Disputed Domain Name was registered before her use of her trade mark, it is the conduct of the Respondent after the Complainant's use and registration of her mark that proves the bad faith required to be proven" and the Panel dug no deeper than finding that although Complainant had a weak case she didn't deserve to be sanctioned. The Majority in Tip Vy Spot decided against RDNH 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." The concurring panelist disagreed with this finding:
A respondent is concerned primarily with winning his case and keeping his domain. A panel bears broader responsibilities. One of these is to preserve the integrity of the entire UDRP process. Another is to call out irresponsible behavior by a complainant. And a third is to identify blameworthy conduct for the benefit of future panels and thus create Policy precedent. When the Rules require a panel to examine the record for abuse, I see no reason for a panel to superimpose a requirement that a respondent expressly request a finding.
This view that one of the broader responsibilities is "to preserve the integrity of the entire UDRP process" is expressed in Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, D2016-1349 (WIPO August 29, 2016) (<unmail.com>). The Panel concluded that there were several grounds for reverse domain name hijacking. Although the certification requirement of Rule 43(b)(xiv) is not specifically mentioned it is implicit in the Panel's finding:
it is not unreasonable for the Panel to expect and require that the Complainant and its counsel will be familiar with Policy precedent and will neither ignore nor gloss over matters on which well-established Policy precedent weighs directly against the Complainant's contentions…. Here, the Complainant has entirely disregarded established Policy precedent regarding the need to prove registration in bad faith in that its submissions on that topic exclusively relate to the use of the disputed domain name. The Complainant also disregarded such precedent in its extensive citation of registered trademark applications, which it ought to have known would not provide the necessary foundation for UDRP-relevant rights."
For each of these groups, there are different demands. In the first and third groups (clearly opportunistic and abusive) parties merely have to show priority. In te second group which is the most contentious the burden is heavier in that each of the parties must create a persuasive record of their rights.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP