The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online dispute resolution regime. While panelists technically have discretion under Rule 13 to hold in-person hearings if they "determine[ ] ... and as an exceptional matter, that such a hearing is necessary for deciding the complaint" no in-person hearing has ever been held. Rule 13 exists to be ignored. Parties make their appearance and present themselves on the written page, and what they say and how they express themselves in pleadings and what they annex are crucial to their argument.
Traditionally with live witnesses, juries and judges look and listen to performances; demeanor, comportment, and facial expression are important factors as indicators of truthfulness. While we can't transfer these qualities to paper submissions in any literal sense, there are equivalents if we think of these qualities in a broader sense as meaning the content and nuance of a speaker's presentation in writing, selecting, organizing, and proving contentions. What speakers say, the language they use, the allegations they make, the narratives they construct, and the evidence they produce or withhold play a decisive role in assessing their claims and defenses. In a word, speakers have to be credible, which is no small matter because it requires a disciplined approach to the content of argument both in the pleadings and annexes.
We are constantly reminded of this in UDRP decisions. In the small percentage of contested disputes (that is, where respondents appear and defend), there is either a lack of evidence or lack of credibility, or both. It infects both parties' submissions. However, measuring credibility is not scientific and there are cases that go one way when they should have gone the other. The dispute over <Camilla.com> is an example, Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC, D2015-1593 (WIPO November 30, 2015), in which the UDRP award ordering transfer was vacated in its entirety, Mrs. Jello, LLC v. Camilla Australia Pty Ltd. 15-cv-08753 (D. NJ 8/1/2016). but there are tics that tend to undermine trust in the speaker (pleadings or declaration), including inconsistencies between contentions and proof and suppositional, fantastic, and unbelievable statements.
The Panel in Mills & Associates, LLC v. Center for Internal Change Inc., FA0903001251337 (Forum May 4, 2009) (<onlinediscprofile.com> and <onlinediscprofiles.com>) found it "incredulous for Complainant to claim it had any superior trademark rights or priority over Respondent" when in the same year that Complainant began using the trademark "Respondent began using the same descriptive terms in promoting its DISC products and services."
While trademarks composed of common words and descriptive phrases are protected against infringement they are not protected against others using the same terms legitimately. For example, in Quality Craft Industries, Inc. v. Domain Admin / Ashantiplc Limited, FA1607001684372 (Forum September 13, 2016) (<montezuma.com>) the Panel "viewed no credible evidence that Respondent has infringed any trademark rights that Complainant may have had in the 'Montezuma' name. Rather, Respondent has used the domain in connection with its value as a geographic/generic term, and not necessarily as it relates to any rights Complainant may have in the 'Montezuma' mark."
Criticism has also been levelled at complainants who must know that the claims asserted could not possible be adjudicated in a UDRP proceeding. The Panel in Cary Pinkowski, Darren Little, and Joe Whitney v. Perlake Corp. SA, FA1507001631539 (Forum September 22, 2015) (<blackjack.com>) found that,
Complainant must have known and in all probability did know, that it was bringing its claim in the wrong forum because the dispute was inherently a complicated contractual dispute beyond the scope of the UDRP and it must also have known that both the terms of the Policy and the accepted practice prevented such a claim from being entertained in this forum.
Complainant must also "have known that it could not prove Respondent lacked rights or legitimate interests or that Respondent had engaged in bad faith registration and use of the domain name." And for these reasons (among others) "the Panel finds that the Complaint was brought in bad faith in an attempt to deprive a registered domain-name holder of its domain name and primarily to harass Respondent as the domain-name holder."
By now trademark owners should be well acquainted with the law, namely that it is not unlawful for respondents to hold domains for their intrinsic value as generic words. Equally, and in the opposite camp, it is unlawful (a breach of covenant in fact) to register domain names with knowledge they infringe third-party rights. In IDT Corporation v. Park Youngmi, D2016-1591 (WIPO October 5, 2016) (<bosspay.com>) the Complainant's BOSS mark predates the registration of the domain name by many years, but of course it is a common word. The analysis in ruling in Complainant's favor considers this fact but rejects Respondent's narrative because it is unbelievable; in fact, "strain[s] credulity":
[A]lthough the Respondent states that she intends to use the disputed domain name for payment-related software development, she does not provide any proof of the planning or preparations for same despite submitting ample proof on her other claims. Also, the Panel finds that the Respondent's claim that she is using the disputed domain name to link/connect others to websites that concern Asian philosophy is wholly inconsistent with her previous claim to use it for payment-related software. Moreover, the subject matter of Asian philosophy has no apparent connection with the ordinary meanings of the very words that constitute the disputed domain name — namely "boss" and "pay". Thus, the Respondent's arguments for denying the Complainant's claim of registration and use in bad faith strain credulity.
The question in Fosbrooke, Inc. v. ravindra bala, FA1608001689535 (Forum October 1, 2016) (<tnmattress.com> and <tnmattresses.com>) concerned the "tn" portion of the domain name. Complainant (in the business of selling mattresses) owned T&N. Respondent claims that he registered the domain names as shortened forms of "top-notch mattress(es)" rather than as references to Complainant. The Panel reasoned that,
[t]he question of Respondent's rights or legitimate interests turns on the credibility of this claim, effectively merging into the question of whether Respondent registered and is using the domain names in bad faith.
Respondent's claim was supported by its registration of two other domain names at the same time, <topnotchmattress.com> and <topnotchmattresses.com>. However,
Under the circumstances, the Panel is highly skeptical of Respondent's claim to have selected the domain names because of their generic or descriptive meaning, and tends to agree with Complainant's allegation that Respondent's contemporaneous registration of the other two domain names was merely pretextual.
"Pretextual" is a form of disguise; a prop created to mislead. It crops up again in Monster Energy Company v. Cai Manyi Manyicai, D2016-0301 (WIPO May 1, 2015) (<monsterenergy.ren> and <monsterenergy.xyz>). Respondent alleged in support of its good faith registration that
In order to have an online presence it decided to register the brand name "Magician Anna's Chicken" (pronounced in Chinese, "mo shi an na ji) which in Chinese sounds like Monster Energy. The name was to convey the novel methods it had invented for smoking the meat and making it more tasteful and fragrant so as to allow customers to have a nutritious meal and provide them with the energy they require. It chose the name MONSTER ENERGY to convey the meaning behind the brand in both English and Chinese.
However, the MONSTER ENERGY trade mark has a long priority of use "all over the world," so much so that "[i]ts presence on the Internet and social media would make it unusual for any third-party who wants to create an Internet presence not to notice." This being so, "Respondent's explanation of its selection of the Domain Names is disingenuous and highly unbelievable. It would be inconceivable that the Respondent had no knowledge and actual notice of the trade mark when the Domain Names were registered."
There are a number of puzzling decisions awarding domain names to complainants; if they can be explained it is because of a disconnect between the counter-narrative and lack of proof.
Particularly troubling, however, are cases in which priority and reputation are either uncertain at the time of domain registration or decidedly in registrant's favor. But other than that, respondents have to be believable. So, for example, registering a domain name confusingly similar to a trademark in the same business as complainant that registrant redirects to its own trade name will certainly raise a credibility problem sufficient to support forfeiture to complainant. See Richard Beilstein / Heavy Duty Ramps, LLC v. Kevin Jakopin / Landsport, FA160100 1657777 (Forum March 9, 2016) {"Respondent's domain name of <hdramp.com> resolves [that is, redirects] to a splash page that advertises the same type of goods offered under Complainants mark, according to Panel's view of Complainant's Attached Annex F. This splash page directs the consumer to the Respondent's website at Landsport.com,")
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP