World Intellectual Property Organization

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")

© 2011 World Intellectual Property Organization

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 update and extension of its informal overview of panel positions on key procedural and substantial issues. This WIPO Overview 2.0 includes new decision references supporting each line of opinion, with over 380 decisions (formerly 100) from over 180 (formerly 80) different UDRP panelists now listed. Reflecting the evolution of the Domain Name System and UDRP jurisprudence, the number of issues included in the WIPO Overview has doubled.

While some of these 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 attract a diversity of views. The WIPO Center's identification of questions and careful and conservative evaluation of opinions is based on some 20,000 UDRP cases it has administered through March 31, 2011. Detailed information on all views is available from the WIPO Center's online Legal Index of WIPO UDRP Panel Decisions, its full text decision search facility, and the full posting of all decisions.

This WIPO Overview was originally created and has been updated and expanded 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. Moreover, these opinions must be formed in the context of a rapidly evolving Domain Name System and Internet. 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 WIPO 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 WIPO Overview cannot serve as a substitution for each party's obligation to argue and establish its case under the UDRP.

The initiative for this WIPO Overview 2.0 was welcomed by the WIPO Domain Name Panelists Meetings convened in Geneva in October 2009 and 2010. The contents, which also reflect discussions at these Meetings, have benefited from substantial contribution and informal review by a number of the most experienced WIPO panelists. The WIPO Center, in consultation with its panelists, will on appropriate occasions consider undertaking further updates. (The original edition of this WIPO Overview will also continue to be accessible on the WIPO Center’s website.)

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 identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?
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 trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?
1.5 Can a complainant show UDRP-relevant rights in a geographical term or identifier?
1.6 Can a complainant show UDRP-relevant 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 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?
1.9 Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark?
1.10 Is a domain name which contains a common or obvious misspelling of a trademark (i.e., typosquatting) confusingly similar to a complainant's trademark?
1.11 Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?

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 rights or legitimate interests in a domain name comprised of a dictionary word(s)?
2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
2.4 Can a criticism site generate rights or legitimate interests in the disputed domain name?
2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?
2.6 Do parking and landing pages or pay-per-click (PPC) links generate rights or legitimate interests in the disputed domain name?
2.7 Does a respondent trademark corresponding to a disputed domain name automatically generate rights or legitimate interests?

3. Third UDRP Element

3.1 Can bad faith be found if the domain name was registered before the trademark was registered or before unregistered 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 to contact the trademark holder (passive holding)?
3.3 What constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name?
3.4 Can constructive notice, or a finding that a respondent "knew or should have known" about a trademark, or willful blindness, form a basis for finding 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 the domain name was registered in bad faith?
3.8 Can third-party or "automatically generated" material appearing on a website form a basis for finding registration and/or use in bad faith?
3.9 Can use of a privacy or proxy registration service form a basis for finding bad faith?
3.10 Can the use of "robots.txt" or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding in bad faith?
3.11 Can tarnishment of a trademark form a basis for finding bad faith?

4. Procedural Questions

4.1 What deference is owed to past UDRP decisions dealing with similar factual matters or legal issues?
4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
4.3 What is the proper language of the proceeding and what are the relevant considerations in this regard?
4.4 Under what circumstances can a refiled case be accepted?
4.5 May a panel perform independent research when reaching a decision?
4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
4.7 What is the standard of proof under the UDRP?
4.8 Under what circumstances may further domain names be added to a filed complaint?
4.9 Who is the proper respondent in a case involving a privacy or proxy registration service?
4.10 Does delay in bringing a complaint prevent a complainant from filing under the UDRP?
4.11 Can a registrar be liable as a registrant under the UDRP?
4.12 Can UDRP proceedings be suspended for purposes of settlement?
4.13 Can a panel decide a case under the UDRP based on a respondent's consent to transfer?
4.14 What is the relationship between UDRP proceedings and court proceedings?
4.15 To what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith?
4.16 Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
4.17 In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made?

DISCUSSION

1. First UDRP Element (UDRP paragraph 4(a)(i))

See also the relevant section in the WIPO Legal Index of WIPO UDRP Panel Decisions (WIPO Legal Index).

1.1 Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?

See also the relevant section in the WIPO Legal Index.

Consensus view: If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.

Relevant decisions:

Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503, <nauga.net> inter alia, Transfer
Thaigem Global Marketing Limited v. Sanchai Aree
, WIPO Case No. D2002-0358, <thaigem.net>, Transfer
Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano
, WIPO Case No. D2003-0661, <parmigiano.org>, Transfer
F. Hoffmann-La Roche AG v. Relish Enterprises
, WIPO Case No. D2007-1629, <xenicalla.com>, Transfer
Drugstore.com, Inc. v. Nurhul Chee / Robert Murry
, WIPO Case No. D2008-0230, <drugstoretm.com>, Denial with dissenting opinion
RapidShare AG and Christian Schmid v. majeed randi
, WIPO Case No. D2010-1089, <rapidpiracy.com>, Transfer

In certain, highly limited circumstances, some panels have opted to examine the circumstances of trademark registration in considering whether the registration satisfies UDRP requirements. In such cases, panels have typically found trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) are not owed the same deference under the UDRP as examined registrations. In certain cases some panels have declined to consider trademark registrations listed solely on a supplemental register, at least where the validity of or deference due to such listed mark under applicable national law (i.e., the law applicable to the concerned register) is in genuine doubt. Where a trademark includes a word or textual component which has been entirely disclaimed (indicating the complainant has no exclusive rights in such word or text) within the relevant registration, or of a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration alone may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP, absent a showing of acquired distinctiveness through use of the relevant mark. In practice, the latter would typically entail establishing a case for common law or unregistered rights in the mark. [See further paragraph 1.7 below regarding what needs to be shown for common law or unregistered marks under the UDRP. See also paragraph 1.11 below regarding the effect of trademark disclaimers and design elements on assessment of identity or confusing similarity under the UDRP.]

Relevant decisions:

Lion Country Supply, Inc. v. J. Katz, WIPO Case No. D2003-0106, <lioncountrysupply.com>, Transfer
PC Mall, Inc. v. Pygmy Computer Systems, Inc.
, WIPO Case No. D2004-0437,
<mobile-mall.com> inter alia, Denial
Displays Depot, Inc. v. GNO, Inc.
, WIPO Case No. D2006-0445, <displaydepot.com>, Denial
Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com
, WIPO Case No. D2008-1475, <religionnewsservice.com>, Denial
Mario Rodriguez BBS Technologies, lnc. v. Guangzhou Tianji Technology Co. Ltd Pengfei Zhang
, WIPO Case No. D2009-0477, <shadygrovefertilitycenter.com> inter alia, Denial
537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,
WIPO Case No. D2009-0567, <nexflow.com> inter alia, Transfer
No Zebra Network Ltda v. Baixaki.com, Inc
., WIPO Case No. D2009-1071, <baixaki.com>, Transfer

1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?

See also the relevant section in the WIPO Legal Index.

The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).

However: Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.

The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).

Relevant decisions:

Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, <guiness.com>, Transfer
Dixons Group Plc v. Mr. Abu Abdullaah
, WIPO Case No. D2001-0843, <dixons-online.net>, Transfer
America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM
, WIPO Case No. D2001-0918, <aollnews.com> inter alia, Denial, Transfer in part
Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber
, WIPO Case No. D2003-0251, <artlecorbusier.com>, Denial, Transfer in Part
V&S Vin & Sprit AB v. Ooar Supplies
, WIPO Case No. D2004-0962, <absolutxxx.com>, Transfer
Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign
, WIPO Case No. D2004-0206, <covancecampaign.com>, Denial
Ice House America, LLC v. Ice Igloo, Inc.
, WIPO Case No. D2005-0649, <icehouseamerica.com> inter alia, Transfer
SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.
, WIPO Case No. D2008-0792, <myhostingfree.com>, Transfer
Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman
, WIPO Case No. D2008-1267, <hairywinston.com>, Denial
project.me GmbH v. Alan Lin
, WIPO Case No. DME2009-0008, <project.me>, Denial
Research in Motion Limited v. One Star Global LLC
, WIPO Case No. D2009-0227, <unofficialblackberrystore.com>, Transfer
F. Hoffmann-La Roche AG v. P Martin
, WIPO Case No. D2009-0323, <alli-xenical.com>, Transfer
Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited
, WIPO Case No. D2010-0776, <lurpa.com>, Transfer
Mile, Inc. v. Michael Burg
, WIPO Case No. D2010-2011, <lionsden.com>, Denial

1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant's trademark? ("sucks cases")

See also the relevant section in the WIPO Legal Index.

Consensus view: Generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements). Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name [reference is also made to the discussion under paragraph 1.2 above].

Relevant decisions:

Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, <wal-martsucks.com>, Transfer
A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen
, WIPO Case No. D2001-0900, <abercrombieandfilth.com>, Transfer
Asda Group Limited v. Mr. Paul Kilgour
, WIPO Case No. D2002-0857, <asdasucks.net>, Denial
Joseph Dello Russo M.D. v. Michelle Guillaumin
, WIPO Case No. D2006-1627, <dellorussosucks.com> inter alia, Transfer, Denial in part
Société Air France v. MSA, Inc.
, WIPO Case No. D2007-0143, <airfrancesuck.com>, Transfer
Bakers Delight Holdings Ltd v. Andrew Austin
, WIPO Case No. D2008-0006, <bakersdelightlies.com>, Denial
Red Bull GmbH v. Carl Gamel
, WIPO Case No. D2008-0253, <redbullsucks.com>, Transfer
Southern California Regional Rail Authority v. Robert Arkow
, WIPO Case No. D2008-0430, <metrolinksucks.com>, inter alia, Denial
Sermo, Inc. v. CatalystMD, LLC
, WIPO Case No. D2008-0647, <sermosucks.com>, Denial
Vanguard Trademark Holdings USA, LLC v. European Travel Network
, WIPO Case No. D2008-1325, <alamo-sucks.com>, Transfer
Air Austral v. Tian Yi Tong Investment Ltd.
, WIPO Case No. D2009-0020, <airaustralsucks.com>, Transfer
Société Air France v. Mark Allaye-Chan
, WIPO Case No. D2009-0327, <airfrance-suck.com>, Transfer

1.4 Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?

See also the relevant section in the WIPO Legal Index.

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 under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP [see in this regard paragraph 3.1 below].

Relevant decisions:

Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, <digitalvision.com>, Denial
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites
, WIPO Case No. D2003-0598, <2m12.com> inter alia, Transfer
Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall
, WIPO Case No. D2006-0916, <waynerooney.com>, Transfer
Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator
, WIPO Case No. D2007-0856, <iscrub.com>, Transfer
The State of Tennessee, USA v. (DOMAIN NAME 4 SALE) DOMAIN-NAME-4-SALE eMAIL baricci@attglobal.net
, WIPO Case No. D2008-0640, <coverkids.com>, Denial
Reckitt Benckiser Plc v. Eunsook Wi
, WIPO Case No. D2009-0239, <rb.net>, Denial

1.5 Can a complainant show UDRP-relevant rights in a geographical term or identifier?

See also the relevant section in the WIPO Legal Index.

Consensus view: The report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending 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 for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning).

Relevant decisions:

Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617, <stmoritz.com>, Denial
Skipton Building Society v. Peter Colman
, WIPO Case No. D2000-1217, <skipton.com>, Transfer
FC Bayern München AG v. Peoples Net Services Ltd.
, WIPO Case No. D2003-0464, <bayernmuenchen.net> inter alia, Transfer
BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi
, WIPO Case No. D2004-0717, <aberdeenairport.com>, Transfer
Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network
, WIPO Case No. D2007-1318, <zermatt.com>, Denial
Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc, Domain Administrator / Jumeira.com
, WIPO Case No. D2009-0203, <jumeira.com>, Denial
Instra Corporation Pty Ltd v. Domain Management SPM
, WIPO Case No. D2009-1097, <asiaegistry.com> inter alia, Transfer

However: It has generally proven difficult for the legal authority of a geographical area (which has not otherwise obtained a relevant trademark registration) 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., WIPO Case No. D2001-0001, <portofhamina.com>, Denial
Brisbane City Council v. Joyce Russ Advertising Pty Limited
, WIPO Case No. D2001-0069, <brisbane.com>, Denial
Land Sachsen-Anhalt v. Skander Bouhaouala
, WIPO Case No. D2002-0273, <sachsen-anhalt.com>, Denial
Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc.
, WIPO Case No. D2006-0778, <Brabant-wallon.org>, Denial

1.6 Can a complainant show UDRP-relevant rights in a personal name?

See also the relevant section in the WIPO Legal Index.

Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.

Relevant decisions:

Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, <juliaroberts.com>, Transfer
Jeanette Winterson v. Mark Hogarth
, WIPO Case No. D2000-0235, <jeanettewinterson.com> inter alia, Transfer
Dr. Michael Crichton v. In Stealth Mode
, WIPO Case No. D2002-0874, <michael-crichton.com>, Transfer
Tom Cruise v. Network Operations Center / Alberta Hot Rods
, WIPO Case No. D2006-0560, <tomcruise.com>, Transfer
Arthur Golden v. Galileo Asesores S.L.
, WIPO Case No. D2006-1215, <arthurgolden.com> inter alia, Transfer
Jim Carrey v. BWI Domains
, WIPO Case No. D2009-0563, <jimcarrey.com>, Transfer
Jay Leno v. Garrison Hintz,
WIPO Case No. D2009-0569, <weeknightswithjayleno.com>, Transfer
Geri Halliwell v. Rampe Purda/Privacy-Protect.org
, WIPO Case No. D2010-1419, <gerihalliwell.com>, Transfer
Beyoncé Knowles v. Sonny Ahuja
, WIPO Case No. D2010-1431, <beyoncefragrance.com>, Transfer

However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.

Relevant decisions:

Israel Harold Asper v. Communication X Inc., WIPO Case No.D2001-0540, <izzyasper.com> inter alia, Denial
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa
, WIPO Case No.D2003-0248, <aboutsrichinmoy.com> inter alia, Transfer
David Pecker v. Mr. Ferris
, WIPO Case No.D2006-1514, <davidpecker.com>, Denial
Jacques Chardeau, inter alia v. MindViews,
LLC, WIPO Case No.D2008-0778, <caillebotte.com>, Denial
Margaret C. Whitman v. Domains For Sale
, WIPO Case No.D2008-1534, <megwhitmanforgovernor.com> inter alia, Denial
Vanisha Mittal v. info@setrillonario.com
, WIPO Case No.D2010-0810, <vanishamittal.com>, Denial

1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?

See also the relevant section in the WIPO Legal Index.

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

Relevant decisions:

Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, <crux.net >, Transfer
Skattedirektoratet v. Eivind Nag
, WIPO Case No. D2000-1314, <skatteetaten.com>, Transfer
Amsec Enterprises, L.C. v. Sharon McCall
, WIPO Case No. D2001-0083, <backgroundfacts.com>, Denial
Australian Trade Commission v. Matthew Reader
, WIPO Case No. D2002-0786, <austrade.com>, Transfer
Imperial College v. Christophe Dessimoz
, WIPO Case No. D2004-0322, <idealeague.com> inter alia, Transfer
Alpine Entertainment Group, Inc. v. Walter Alvarez
, WIPO Case No. D2006-1392, <realspanking.com>, Denial
Fairview Commercial Lending, Inc. v. Aleksandra Pesalj
, WIPO Case No. D2007-0123, <fairviewlending.org>, Transfer
The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc.
, WIPO Case No. D2008-0483, <thecarephonewarehouse.com> inter alia, Transfer, Denial in Part
Continental Casualty Company v. Andrew Krause / Domains by Proxy, Inc.
, WIPO Case No. D2008-0672, <continentalcasualty.com>, Denial
Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross
, WIPO Case No. D2008-1010, <bs.com>, Denial
Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
, WIPO Case No. D2008-1036,<mancinissleepworld.com>, Denial
La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate
, WIPO Case No. D2009-0534, <culturaprofetica.com>, Transfer
S.N.C. Jesta Fontainebleau v. Po Ser
, WIPO Case No. D2009-1394, <palaisstephany.com>, Transfer

1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?

See also the relevant section in the WIPO Legal Index.

Consensus 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 trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants. [See further paragraph 4.16 below in relation to complaints brought by multiple complainants.]

Relevant decisions:

Telcel, C.A. v. jerm and Jhonattan Ramírez, WIPO Case No. D2002-0309, <telcelbellsouth.com>, Transfer
Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions
, WIPO Case No. D2003-0624, <lexusmichaels.com>, Denial
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
, WIPO Case No. D2003-0796, <televisadeporte.com>, Transfer
Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc.
, WIPO Case No. D2003-1027, <shperion.com>, Transfer
Teva Pharmaceutical USA, Inc. v. US Online Pharmacies
, WIPO Case No. D2007-0368, <adipex-p.com>, Transfer
Komatsu Deutschland GmbH v. Ali Osman / ANS
, WIPO Case No. D2009-0107, <komatsugermany.com> inter alia, Transfer

1.9 Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark?

See also the relevant sections (generic, geographic terms) in the WIPO Legal Index.

The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.

Relevant decisions:

Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, <ansellcondoms.com>, Transfer
Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.
, WIPO Case No. D2005-0587, <naturelle.com> inter alia, Transfer, with Denial in Part
eBay Inc. v. ebayMoving / Izik Apo
, WIPO Case No. D2006-1307, <ebaymoving.com>, Transfer
Playboy Enterprises International, Inc. v. Zeynel Demirtas
, WIPO Case No.D2007-0768, <playboyturkey.com>, Transfer
Hoffmann-La Roche Inc. v. Wei-Chun Hsia
, WIPO Case No.D2008-0923, <yourtamiflushop.com>, Transfer
BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No.D2008-1338, <auriasdiamonds.info> inter alia, Transfer
TPI Holdings, Inc. v. Carmen Armengol
, WIPO Case No.D2009-0361, <autotradertransactions.com>, Transfer
Nintendo of America Inc. v. Fernando Sascha Gutierrez
, WIPO Case No.D2009-0434, <unlimitedwiidownloads.com>, Transfer

1.10 Is a domain name which contains a common or obvious misspelling of a trademark (i.e., typosquatting) confusingly similar to a complainant's trademark?

See also the relevant section in the WIPO Legal Index.

Consensus view: A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.

Relevant decisions:

Wachovia Corporation v. Peter Carrington, WIPO Case No.D2002-0775, <wochovia.com> inter alia, Transfer
Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings
, WIPO Case No.D2004-0971, <fuijifilm.com>, Transfer
Humana Inc. v. Cayman Trademark Trust
, WIPO Case No.D2006-0073, <humanna.com>, Transfer
Edmunds.com, Inc. v. Digi Real Estate Foundation
, WIPO Case No.D2006-1043, <edmundss.com>, Transfer
Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator
, WIPO Case No.D2008-1302, <expresscripts.com>, Transfer

1.11 Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?

See also the relevant section in the WIPO Legal Index.

Textual content which has been expressly disclaimed in a complainant's relevant trademark registration is generally disregarded by panels when assessing a domain name's identity or confusing similarity under the first element of the UDRP. Also, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it. [See further paragraph 1.1 above.]

Relevant decisions:

Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No.D2001-0031, <sweeps.com>, Denial
Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE
, WIPO Case No.D2003-0645, <britishmeat.com> inter alia, Denial
J2 Global Communications, Inc. v. Ideas Plus, Inc.
, WIPO Case No.D2005-0792, <e-fax.com>, Denial
Asset Loan Co. Pty Ltd v. Gregory Rogers
, WIPO Case No.D2006-0300, <assetloanco.net>, Transfer
Dreamstar Cash S.L. v. Brad Klarkson
, WIPO Case No.D2007-1943, <gals4free.com>, Transfer
Hero v. The Heroic Sandwich
, WIPO Case No.D2008-0779, <hero.com>, Denial
Ideation Unlimited, Inc. v. Dan Myers
, WIPO Case No.D2008-1441, <prescriptioncosmetics.com>, Denial
Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc
, WIPO Case No.D2008-1637, <whichcar.com>, Transfer
Casa Editorial El Tiempo, S.A. v. Montanya Ltd,
WIPO Case No.D2009-0103, <clubdesuscriptoreseltiempo.com>, Transfer
RUGGEDCOM, Inc. v. James Krachenfels,
WIPO Case No.D2009-0130, <ruggedrouter.com>, Transfer with Dissenting Opinion
Ville de Paris v. Salient Properties LLC
, WIPO Case No.D2009-1279, <wifiparis.com>, Denial
Espire Infolabs Pvt. Ltd. v. TW Telecom
, WIPO Case No.D2010-1092, <espire.com>, Denial
Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton,
WIPO Case No.D2010-0509, <Islamic-bank.com>, Transfer
Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager
, WIPO Case No.D2010-1239, <ethno.com>, Denial
Comservice SA v. Mdnh Inc., Brendhan Height, WIPO Case No. D2010-1591, <comservice.com>, Denial

2. Second UDRP Element (UDRP paragraph 4(a)(ii))

See also the relevant section in the WIPO Legal Index.

2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?

See also the relevant section in the WIPO Legal Index.

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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.

Relevant decisions:

Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, <croatiaairlines.com>, Transfer
Belupo d.d. v. WACHEM d.o.o.
, WIPO Case No. D2004-0110, <belupo.com>, Transfer
Banco Itau S.A. v. Laercio Teixeira
, WIPO Case No. D2007-0912, <itaushopping.com>, Transfer
Malayan Banking Berhad v. Beauty, Success & Truth International
, WIPO Case No. D2008-1393, <maybank.com>, Transfer
Accor v. Eren Atesmen
, WIPO Case No. D2009-0701, <accorreviews.com>, Transfer

2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?

See also the relevant section in the WIPO Legal Index.

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 UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).

Relevant decisions:

Allocation Network GmbH v. Steve Gregory, WIPO Case No.D2000-0016, <allocation.com> inter alia, Denial
Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.
, WIPO Case No.D2000-1005, <ezstreet.net>, Denial
402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie
, WIPO Case No.D2000-1223, <trashylingerie.com>, Transfer with Concurring Opinion
Porto Chico Stores, Inc. v. Otavio Zambon
, WIPO Case No.D2000-1270, <lovelygirls.com>, Denial
Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.
, WIPO Case No.D2001-0031, <sweeps.com>, Denial
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin
, WIPO Case No.D2002-0635, <classmat.com> inter alia, Transfer
Gorstew Limited v. Worldwidewebsales.com
, WIPO Case No.D2002-0744, <anguillabeaches.com> inter alia, Denial
Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset
, WIPO Case No.D2002-1058, <completesportsbetting.com>, Transfer
Owens Corning Fiberglas Technology, Inc v. Hammerstone
, WIPO Case No.D2003-0903, <cultured-stone.com>, Transfer
Mobile Communication Service Inc. v. WebReg, RN
, WIPO Case No.D2005-1304, <mobilcom.com>, Transfer
Media General Communications, Inc. v. Rarenames, WebReg
, WIPO Case No.D2006-0964, <wcmh.com>, Transfer
Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network
, <zermatt.com>, WIPO Case No.D2007-1318, Denial
Terroni Inc. v. Gioacchino Zerbo
, WIPO Case No.D2008-0666, <terroni.com>, Transfer
Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg
, D2008-1849, <tgvcinema.com> inter alia, Transfer
St Andrews Links Ltd v. Refresh Design
, WIPO Case No.D2009-0601, <theoldcourse.com>, Transfer
Gibson, LLC v. Jeanette Valencia
, WIPO Case No.D2010-0490, <moderncowgirls.com>, Transfer

2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?

See also the relevant section in the WIPO Legal Index.

Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.

However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]

Relevant decisions:

Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, <okidataparts.com>, Denial
Experian Information Solutions, Inc. v. Credit Research, Inc.
, WIPO Case No.D2002-0095, <experiancredit.com> inter alia, Transfer
National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.
, WIPO Case No.D2007-1524, <nascartours.com>, Denial
ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.
, WIPO Case No.D2008-0936, <ittbarton.com> inter alia, Denial
MasterCard International Incorporated v. Global Access
, WIPO Case No.D2008-1940, <mastercards.com>, Transfer
Research in Motion Limited v. One Star Global LLC
, WIPO Case No.D2009-0227, <unofficialblackberrystore.com>, Transfer
Intex Recreation Corp. v. RBT, Inc., Ira Weinstein,
WIPO Case No.,D2010-0119, <intexpool.com>, Transfer
Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights
, WIPO Case No.D2010-0211, <sheratonnassaubeachresort.com>, Transfer
National Association of Realtors v. John Fothergill
, WIPO Case No.D2010-1284, <listonrealtor.com>, Transfer

Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder's products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.

Relevant decisions:

Motorola, Inc. vs NewGate Internet, Inc., WIPO Case No.D2000-0079, <talkabout.com>, Transfer with Dissenting Opinion
General Electric Company v. Japan, Inc.
, WIPO Case No.D2001-0410, <japan-ge.com>, Transfer
Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery
, WIPO Case No.D2004-1060, <radacutlerysales.com>, Transfer
F. Hoffmann-La Roche AG v. Canadian Pharmacy Network Online
, WIPO Case No.D2005-1203, <canadian-pharmacy-xeloda.com>, Transfer
X-ONE B.V. v. Robert Modic
, WIPO Case No.D2010-0207, <gaastrashop.com>, Transfer
Vibram S.p.A. v. Chen yanbing
, WIPO Case No.D2010-0981, <discountvibramfivefingers.com>, Transfer
Beyoncé Knowles v. Sonny Ahuja
, WIPO Case No.D2010-1431, <beyoncefragrance.com>, Transfer

For cases dealing with a non-contractual relationship see:

DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No.D2001-0160, <mercedesshop.com>, Denial
Philip Morris Incorporated v. Alex Tsypkin
, WIPO Case No.D2002-0946, <discount-marlboro-cigarettes.com>, Transfer
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent
, WIPO Case No.D2004-0481, <porsche-buy.com> inter alia, Denial
Daimler AG v. William Wood
, WIPO Case No.D2008-1712, <mercedesshop.com>, Transfer

2.4 Can a criticism site generate rights and legitimate interests?

See also the relevant section in the WIPO Legal Index.

This section only concerns sites that practice genuine, noncommercial 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 it is primarily a pretext for commercial advantage.

See:
Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No.D2000-0477, <walmartcanadasucks.com> inter alia, Transfer
Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd
., WIPO Case No.D2001-0398, <relojesrolex.com> inter alia), Transfer

In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally).

See: Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No.D2004-0014, <hjta.com> Denial
Sermo, Inc. v. CatalystMD, LLC
, WIPO Case No.D2008-0647, <sermosucks.com> Denial.

View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e, <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.

Relevant decisions:

Skattedirektoratet v. Eivind Nag, WIPO Case No.D2000-1314, <skatteetaten.com>, Transfer
Myer Stores Limited v. Mr. David John Singh
, WIPO Case No.D2001-0763, <myeronline.com>, Transfer
Triodos Bank NV v. Ashley Dobbs
, WIPO Case No.D2002-0776, <triodos-bank.com>, Transfer
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez
, WIPO Case No.D2003-0166, <natwestbanksucks.com>, Transfer
Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc.
, WIPO Case No.D2004-0136, <kirklandandellis.com>, Transfer
1066 Housing Association Ltd. v. Mr. D. Morgan
, WIPO Case No.D2007-1461, <1066ha.com>, Transfer
Hoteles Turí­sticos Unidos S.A., HOTUSA v. Jomar Technologies
, WIPO Case No.D2008-0136, <eurostarsblue.com>, Transfer
Aspis Liv F
örsäkrings AB v. Neon Network, LLC, WIPO Case No.D2008-0387, <aspis.com>, Transfer with Dissenting Opinion
The First Baptist Church of Glenarden v. Melvin Jones,
WIPO Case No.D2009-0022, <fbcglenarden.com>, Transfer
Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,
WIPO Case No.D2009-1416, <anastasia-international.info>, 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 such use is fair and noncommercial.

Relevant decisions:

Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No.D2000-0190, <bridgestone-firestone.net>, Denial
TMP Worldwide Inc. v. Jennifer L. Potter
, WIPO Case No.D2000-0536, <tmpworldwide.net> inter alia, Denial
Howard Jarvis Taxpayers Association v. Paul McCauley
, WIPO Case No.D2004-0014, <hjta.com>, Denial
Sermo, Inc. v. CatalystMD, LLC
, WIPO Case No.D2008-0647, <sermosucks.com>, Denial
Sutherland Institute v. Continuative LLC
, WIPO Case No.D2009-0693, <sutherlandinstitute.com>, Denial

Additional considerations: Some panels have opted to assess questions of whether a respondent may have a legitimate interest in using a trademark as part of the domain name of a criticism site by reference to additional considerations, including whether: (i) the domain name has been registered and is used genuinely for the purpose of criticizing the mark owner; (ii) the registrant believes the criticism to be well-founded and lacks intent for commercial gain; (iii) it is immediately apparent to Internet users visiting the website at the domain name that it is not operated by the owner of the mark; (iv) the respondent has refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark; (v) where appropriate, a prominent and appropriate link is provided to the relevant trademark owner's website; and (vi) where there is a likelihood that email intended for the complainant will use the domain name in issue, senders are alerted in an appropriate way that their emails have been misaddressed.

Relevant Decisions:

Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No.D2004-0206, <covancecampaign.com>, Denial
Fundación Calvin Ayre Foundation v. Erik Deutsch
, WIPO Case No.D2007-1947, <calvinayrefoundation.org>, Transfer
Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc.
, WIPO Case No.D2009-0062, <royalholiday.info>, Transfer
Midland Heart Limited v. Uton Black
, WIPO Case No.D2009-0076, <midlandheart.com>, Denial
Coast Hotels Ltd. v. Bill Lewis and UNITE HERE
, WIPO Case No.D2009-1295, <coasthotels-badforbc.info>, Denial

2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?

See also the relevant section in the WIPO Legal Index.

Many of the considerations used by panels in relation to criticism sites, as discussed in paragraph 2.4 above, also are applied by panels in relation to fan or tribute cites. Moreover, this section only deals with fan sites that are clearly active and noncommercial. There are many UDRP cases in which the respondent claims to have an active noncommercial fan site but the panel finds that it is primarily a pretext for commercial advantage.
See:
Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No.D2000-1000, <bridgetjones.com>,Transfer

View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).

Relevant decisions:

Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No.D2001-1042, <garyjennings.com>, Denial
2001 White Castle Way, Inc. v. Glyn O. Jacobs
, WIPO Case No.D2004-0001, <patbenatar.com>, Denial
Tom Cruise v. Network Operations Center / Alberta Hot Rods
, WIPO Case No.D2006-0560, <tomcruise.com>, Transfer
Estate of Francis Newton Souza v. ZWYX.org Ltd
., WIPO Case No.D2007-0221, <fnsouza.com>, Denial
Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto
, WIPO Case No.D2007-1841, <kareemabduljabbar.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC
, WIPO Case No.D2009-0057, <jenniferlopez.net> inter alia, Transfer

View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.

Relevant decisions:

David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459, <davidgilmour.com>, Transfer
Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall,
WIPO Case No. D2006-0916, <waynerooney.com>, Transfer
David Foox v. Kung Fox and Bill Hicks
, WIPO Case No. D2008-0472, <davidfoox.info> inter alia, Transfer
Russell Peters v. George Koshy and Navigation Catalyst Systems, Inc.
, WIPO Case No. D2009-0173, <russelpeters.com>, Transfer
Giochi Preziosi S.P.A. v. VGMD NetWeb S.L.,
WIPO Case No. D2009-0542, <gormiti.mobi>, Denial

2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?

See also the relevant section in the WIPO Legal Index.

Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.

Relevant decisions:

Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267, <express-scrips.com>, Transfer
Asian World of Martial Arts Inc. v. Texas International Property Associates
, WIPO Case No. D2007-1415, <proforcekarate.com> inter alia, Transfer
Gold Medal Travel Group plc v. Damir Kruzicevic
, WIPO Case No. D2007-1902, <goldmedal.com>, Denial
Legacy Health System v. Nijat Hassanov
, WIPO Case No. D2008-1708, <legacyhealthsystem.com>, Transfer
Trade Me Limited v. Vertical Axis Inc
, WIPO Case No. D2009-0093, <trademe.com>, Denial
Mpire Corporation v. Michael Frey
, WIPO Case No. D2009-0258, <widgebucks.com>, Transfer
Compart AG v. Compart.com / Vertical Axis, Inc.
, WIPO Case No. D2009-0462, <compart.com>, Transfer
Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.
, WIPO Case No. D2010-1404, <trumplasvegas.com>, Transfer
Paris Hilton v. Deepak Kumar
, WIPO Case No. D2010-1364, <parishiltonheiress.com>, Transfer
Lardi Ltd v. Belize Domain WHOIS Service Lt
, WIPO Case No. D2010-1437, <larditrans.com>, Transfer
Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No., D2010-1652, <havanna.com>, Denial

2.7 Does a respondent trademark corresponding to a disputed domain name automatically generate rights or legitimate interests?

See also the relevant section in the WIPO Legal Index.

Panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.

Relevant decisions:

Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, <madonna.com>, Transfer
Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, <cavinton.com> inter alia, Transfer, Cancellation in Part
British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, <skytravel.com>, Denial

3. Third UDRP Element (UDRP paragraph 4(a)(iii))

See also the relevant section in the WIPO Legal Index.

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?

See also the relevant section in the WIPO Legal Index.

Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], 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.

Relevant decisions:

John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, <ode.com>, Denial
Digital Vision, Ltd. v. Advanced Chemill Systems
, WIPO Case No. D2001-0827, <digitalvision.com>, Denial
PrintForBusiness B.V v. LBS Horticulture
, WIPO Case No. D2001-1182, <print4business.com>, Denial
Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM
, WIPO Case No. D2008-0641, <collectivemedia.com>, Denial
Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH
, WIPO Case No. D2009-0943, <meeza.com>, Denial

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 has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)

Relevant decisions:

ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, <execujet.com>, Denial
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc)
, WIPO Case No. D2003-0320, <kangwonland.com>, Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites
, WIPO Case No. D2003-0598, <2m12.com> inter alia, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online
, WIPO Case No. D2003-0845, <provotownecentre.com> inter alia, Transfer
Geopack v. Name Administration Inc. (BVI)
, WIPO Case No. D2006-1590, <geopack.com>, Denial
537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation
, WIPO Case No. D2009-0567, <nexflow.com> inter alia, Transfer
San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc
., WIPO Case No. D2009-1545, <sandiegohydro.com>, Denial

Furthermore: Irrespective of whether the domain name was registered before the relevant trademark was registered or acquired, a small number of panels have begun to consider the effect of the requirement of paragraph 2 of the UDRP, which states: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Some panels have regarded this as a warranty at the time of registration that the domain name will not be used in bad faith, finding that, by breaching such warranty, use in bad faith may render the registration in bad faith. Other panels have looked at the totality of the circumstances in assessing "registration and use in bad faith," as a unitary concept, given that some of the circumstances listed as evidence of bad faith registration and use in paragraph 4(b) of the UDRP appear to discuss only use and not registration. Still other panels that have considered these approaches have instead reaffirmed the "literal" interpretation of bad faith registration and bad faith use regardless of paragraphs 2 or 4(b) of the UDRP. This is a developing area of UDRP jurisprudence.

Relevant decisions:

Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting, WIPO Case No. D2001-1391, <sexplanets.com>, Denial
City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE
, WIPO Case No. D2009-0643, <mummygold.com>, Denial
Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and
Octogen e-Solutions
, WIPO Case No. D2009-0786, <octogen.com>, inter alia, Transfer
Validas, LLC v. SMVS Consultancy Private Limited
, WIPO Case No. D2009-1413, <validas.com>, Denial
Torus Insurance Holdings Limited v. Torus Computer Resources
, WIPO Case No. D2009-1455, <torus.com>, Transfer
Eastman Sporto Group LLC v. Jim and Kenny
, WIPO Case No. D2009-1688, <sporto.com>, Transfer
Camon S.p.A. v. Intelli-Pet, LLC,
WIPO Case No. D2009-1716, <walkydogusa.com>, Denial
Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois,
WIPO Case No. D2010-0217, <trueroots.com>, Denial
Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,
WIPO Case No. D2010-0470, <bgt.com>, Denial
A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.
, WIPO Case No. D2010-0800, <ferrlecit.com>, Denial with Dissenting Opinion
Jappy GmbH v. Satoshi Shimoshita
, WIPO Case No. D2010-1001, <jappy.com>, Transfer
Mile, Inc. v. Michael Burg
, WIPO Case No. D2010-2011, <lionsden.com>, Denial

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)?

See also the relevant section in the WIPO Legal Index.

Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).

Relevant decisions:

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Transfer
Jupiters Limited v. Aaron Hall,
WIPO Case No. D2000-0574, <jupiterscasino.com> inter alia, Transfer
Ladbroke Group Plc v. Sonoma International LDC
, WIPO Case No. D2002-0131, <ladbrokespoker.com> inter alia, Transfer
Westdev Limited v. Private Data
, WIPO Case No. D2007-1903, <numberone.com>, Transfer
Malayan Banking Berhad v. Beauty, Success & Truth International
, WIPO Case No. D2008-1393, <maybank.com>, Transfer
Intel Corporation v. The Pentium Group
, WIPO Case No. D2009-0273, <pentiumgroup.net>, Transfer

3.3 What constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name?

See also the relevant section in the WIPO Legal Index.

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 trademarks. However the registration of two domain names in the same case is not generally sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example.

Relevant decisions:

Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010, <homeinteriors.net> inter alia, Transfer
Telstra Corporation Limited v. Ozurls
, WIPO Case No. D2001-0046, <i-telstra.com> inter alia, Transfer
Investone Retirement Specialists, Inc. v. Motohisa Ohno
, WIPO Case No. D2005-0643, <investone.com>, Denial
Playboy Enterprises International, Inc. v. Tom Baert
, WIPO Case No. D2007-0968, <playboys.mobi>, Transfer
AMPO, S. COOP v. Contactprivacy.com, Taeho Kim, Philippine
, WIPO Case No. D2009-0177, <ampo.com>, Transfer
Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty
, WIPO Case No. D2009-0798, <wikipeadia.com>, Transfer

3.4 Can constructive notice, or a finding that a respondent "knew or should have known" about a trademark, or willful blindness, form a basis for finding bad faith?

See also the relevant section in the WIPO Legal Index.

This paragraph considers a number of inter-related concepts which pertain to the issue of a domain name registrant's "knowledge" of the relevant trademark, as discussed by WIPO UDRP panels.

Constructive Notice: Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP. However, some panels have been prepared to do so in certain circumstances including where a respondent was located in the US and a complainant had a federal US trademark registered before the domain name was obtained by the respondent, and there are indicia of cybersquatting. In such cases, in the absence of positive evidence that the respondent had actual notice, a finding that the respondent was on constructive notice of the complainant's registered trademark has sometimes been used to support a finding of bad faith, with the panel concluding that the respondent had relevant notice of the trademark. Some panels in this type of case have been less inclined to find registration in bad faith based solely upon a claim of such notice where the complainant's trademark is less well-known or corresponds to a common word or phrase.

See also the relevant section in the WIPO Legal Index.

Relevant decisions:

Sterling Jewelers Inc. v. Sterling Jewelers, Inc. and Domain Traffic, WIPO Case No. D2002-0772, <jaredjewelry.com>, Transfer
The Sportsman's Guide, Inc. v. Modern Limited, Cayman Islands
, WIPO Case No. D2003-0305, <sportsmenguide.com>, Transfer
Champion Broadcasting System, Inc. v. Nokta Internet Technologies
, WIPO Case No. D2006-0128, <wunr.com>, Transfer
PC Mall, Inc v. NWPCMALL LLC,
WIPO Case No. D2007-0420, <nwpcmall.com>, Denial
American Funds Distributors, Inc. v. Domain Administration Limited
, WIPO Case No. D2007-0950, <amercanfunds.com>, Transfer
The Fragrance Foundation Inc. v. Texas International Property Associates
, WIPO Case No. D2008-0982, <fragrancefoundation.com>, Transfer
Kellwood Company v. Onesies Corporation
, WIPO Case No. D2008-1172, <onesies.net>, Denial
Aspenwood Dental Associates, Inc. v. Thomas Wade
, WIPO Case No. D2009-0675, <coloradodentalimplantcenter.com>, Denial

"Knew or Should Have Known": Some panels have in certain circumstances found bad faith registration based in part on proof that the respondent "knew or should have known" about the existence of the complainant's trademark (other than through the above-mentioned US concept of constructive notice). This may be seen as an instance of the panel attributing readily obtainable knowledge to a respondent even if the respondent avers that it did not have the knowledge. Circumstances in which panels have made such finding have included those in which the complainant's trademark was shown to be well-known or in wide use on the Internet or otherwise at the time the domain name was registered, or when a respondent's denial of knowledge is otherwise highly improbable. Some panels have applied a related concept of "constructive knowledge" in particular circumstances, notably where a respondent has acquired a domain name through a process of automated bulk transfer of domain names. Some panels have adopted this approach on the back of paragraph 2 of the UDRP which puts some burden on registrants where it states: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Other panels have observed that unless some level of constructive knowledge is recognized, automated transfers will represent a blanket defense to bad faith.

See also the relevant section in the WIPO Legal Index.

Relevant Decisions:

SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092, <sembcorp.com>, Transfer
The Nasdaq Stock Market, Inc. v. H. Pouran
, WIPO Case No. D2002-0770, <nasdaqtoday.com> inter alia, Transfer
Caesars World, Inc. v. Forum LLC.
, WIPO Case No. D2005-0517, <caesarspalacepoker.com>, Transfer
Maori Television Service v. Damien Sampat
, WIPO Case No. D2005-0524, <maoritv.com>, Transfer
uwe GMbH v. Telepathy, Inc.
, WIPO Case No. D2007-0261, <uwe.com>, Denial
Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino
, WIPO Case No. D2007-0416, <casinoarizona.com>, Transfer
F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.
, WIPO Case No. D2008-0422, <wwwroche.com>, Transfer
Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks
, WIPO Case No. D2008-0585, <decal.com>, Denial
Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM
, WIPO Case No. D2008-0641, <collectivemedia.com>, Denial
Hero v. The Heroic Sandwich
, WIPO Case No. D2008-0779, <hero.com>, Denial
The Gap, Inc. v. Deng Youqian
, WIPO Case No. D2009-0113, <babygapclothing.com> inter alia, Transfer
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot
, WIPO Case No. D2009-0320, <backberry.com>, Transfer

Willful Blindness: Some panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith. For example, a respondent's registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks (although some panels have also noted that, in theory, such general principle may be just as applicable to non-professional domain name registrants, who, after all, are also subject to paragraph 2 of the UDRP, which provides: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.")

See also the relevant section in the WIPO Legal Index.

Relevant decisions:

Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, <mobilcom.com>, Transfer
Media General Communications, Inc. v. Rarenames, WebReg
, WIPO Case No. D2006-0964, <wcmh.com>, Transfer
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager
, WIPO Case No. D2007-0062, <creditkeeper.com>, Transfer
mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.
, WIPO Case No. D2007-1141, <imyxer.com> inter alia, Transfer
Grundfos A/S v. Texas International Property Associates
, WIPO Case No. D2007-1448, <groundfos.com>, Transfer
General Electric Company v. Marketing Total S.A
, WIPO Case No. D2007-1834, <gegeneralelectric.com> inter alia, Transfer
5B Investments, Inc. v. RareNames, WebReg
, WIPO Case No. D2008-0146, <storageplus.com>, Denial
Terroni Inc. v. Gioacchino Zerbo
, WIPO Case No. D2008-0666, <terroni.com>, Transfer
Compart AG v. Compart.com / Vertical Axis, Inc.,
WIPO Case No. D2009-0462, <compart.com>, Transfer
The Law Society v. RareNames WebReg / Rarenames, Inc.
, WIPO Case No. D2009-0720, <thelawsociety.com>, Transfer
Novo Nordisk A/S v. Andrew Melcher
, WIPO Case No. D2010-0095, <flextouch.com>, Denial
Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois
, WIPO Case No. D2010-0217, <trueroots.com>, Denial with Dissenting Opinion

Some panels have found that in certain circumstances there may be an affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others, for example, through an Internet search on the domain name through Google or Yahoo!. [With regard to paragraph 2 of the UDRP, and representations and warranties there-under, see also paragraph 3.1 above.]

See also the relevant section in the WIPO Legal Index.

Relevant decisions:

Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, <firstquote.org>, Transfer
BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis
, WIPO Case No. D2010-1187, <bzzaget.com>, Transfer
Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, <lionsden.com>, Denial

3.5 What is the role of a disclaimer on the web page of a disputed domain name?

See also the relevant section in the WIPO Legal Index.

Consensus view: The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user "initial interest confusion" - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant's trademark. However a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest.

Relevant decisions:

Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, <estelauder.com> inter alia, Transfer
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic
, WIPO Case No. D2000-1698, <guiness.com>, Transfer
Besiktas Jimnastik Kulubu Dernegi v. Mehmet Tolga Avcioglu
, WIPO Case No. D2003-0035, <besiktas.com>, Denial
Pliva, Inc. v. Eric Kaiser
, WIPO Case No. D2003-0316, <antabuse.net>, Transfer
AARC Inc. v. Jayashankar Balaraman
, WIPO Case No. D2007-0578, <advanceamericacash.net>, Transfer
Broan-Nutone, LLC v. Ready Set Sales
, WIPO Case No. D2010-0920, <broanreplacementparts.com> inter alia, Transfer

3.6 Can statements made in settlement discussions be relevant to showing bad faith?

See also the relevant section in the WIPO Legal Index.

Consensus view: Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant's filing of a UDRP complaint, or after such filing. The latter takes account of the fact that cybersquatters often wait until a trademark holder launches a complaint before asking for payment. The legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith, and panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Admissibility may turn to some extent on which party - complainant or respondent - initiated the settlement discussions, and on whether the complainant itself may have solicited any offer to sell.

Relevant decisions:

CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243, <cbs.org>, Transfer
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.
, WIPO Case No. D2000-1525, <magnumpiering.com> inter alia, Transfer
Advance Magazine Publishers Inc. v Marcellod Russo
, WIPO Case No. D2001-1049, <vogueaustralia.com>, Transfer
McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd
, WIPO Case No. D2004-0078, <maxol.com>, Transfer
NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.
, WIPO Case No. D2008-1984, <aliensport.com>, Transfer
The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd
, WIPO Case No. D2009-0998, <bafanabafana.com>, 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?

See also the relevant section in the WIPO Legal Index.

While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name. (Movement of a domain name registration from one privacy or proxy service to another may in certain circumstances constitute evidence of a new registration for this purpose.) Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.

Relevant decisions:

Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, <sami.com>, Denial
PAA Laboratories GmbH v. Printing Arts America
, WIPO Case No. D2004-0338, <paa.com>, Denial
BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service
, WIPO Case No. D2008-0882, <bme.com>, Transfer
Surcouf v. Shen Kaixin
, WIPO Case No. D2009-0407, <surcouf.net>, Transfer
Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc
., WIPO Case No. D2009-1244, <intellogy.com>, Denial

However, relying in part on paragraph 2 of the UDRP which expressly references the representations made at the time of renewal, a small number of panels have begun to consider the renewal of a domain name as equivalent to a new registration in certain circumstances, including where it is found that: the registrant changed its use of the domain name prior to renewal; such use amounts to textbook cybersquatting; and the registrant nevertheless proceeded to renew the domain name registration with intent to benefit from its inclusion of the complainant's trademark.

Relevant decisions:

Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, <sporto.com>, Transfer

In the case of a purchase by one party from another of a portfolio or batch of domain names, these would, consistent with the change in control over the names, normally be regarded as new registrations for the purpose of the UDRP, whereby the relevant intent of the acquiring party is to be assessed as at the date of acquisition of the relevant portfolio or batch of domain names.

Relevant decisions:

Ticketmaster Corporation v. Global Access, WIPO Case No.D2007-1921, <ticketmast.com>, Transfer

3.8 Can third party or "automatically" generated material appearing on a website form a basis for finding bad faith?

See also the relevant section in the WIPO Legal Index.

[See also paragraph 2.6 above]

Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).

Relevant decisions:

Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315, <shangrila.com>, Transfer
Owens Corning v. NA
, WIPO Case No. D2007-1143, <pinkbatts.com>, Transfer
McDonald's Corporation v. ZusCom
, WIPO Case No. D2007-1353, <ronaldmcdonaldhouse.info>, Transfer
Villeroy & Boch AG v. Mario Pingerna
, WIPO Case No. D2007-1912, <villeroy-boch.mobi>, Transfer
Rolex Watch U.S.A., Inc. v. Vadim Krivitsky
, WIPO Case No. D2008-0396, <rolexdealer.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC
, WIPO Case No. D2009-0057, <jenniferlopez.net> inter alia, Transfer

Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.

Relevant decisions:

Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275, <outside.com>, Denial

3.9 Can use of a privacy or proxy registration service form a basis for finding bad faith?

See also the relevant section in the WIPO Legal Index.

Consensus view: Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the "true" or "underlying" registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith. Identification by a registrar or privacy or proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyberflight and bad faith, as may failure in response to a UDRP provider's request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regarded as the relevant respondent of record). Reference is sometimes made to paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement aiming to regulate the "licensing" of a domain name. [On the broader subject of privacy and proxy registration services and party identity within a UDRP proceeding, see paragraph 4.9 below].

Relevant decisions:

Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523, <rymanauditorium.com>, Transfer
Fifth Third Bancorp v. Secure Whois Information Service
, WIPO Case No. D2006-0696, <fifththirdreward.com>, Transfer
WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks
, WIPO Case No. D2006-0975, <wwf.com>, Denial
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager
, WIPO Case No. D2007-0062, <creditkeeper.com>, Transfer
The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658]
, WIPO Case No. D2007-1438, <ifranchise.com>, Denial
Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services
, WIPO Case No. D2007-1743, <wwwwired.com>, Transfer
The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / "The Saul Zaentz Company"
, WIPO Case No. D2008-0156, <middleearthonline.com>, Transfer
Ustream.TV, Inc. v. Vertical Axis, Inc
, WIPO Case No. D2008-0598, <ustream.com>, Transfer
Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>,
WIPO Case No. D2009-0266, <scottforesmanandcompany.com>, Transfer

3.10 Can the use of "robots.txt" or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding bad faith?

See also the relevant section in the WIPO Legal Index.

Panels have found that, absent convincing justification in a given case for the employment of "robots.txt" or other similar circumvention mechanisms to prevent access to historical website content on a repository such as the Internet Archive (at www.archive.org), the use of such device may be considered as an attempt by the domain name registrant to block access by the panel to relevant evidence (for example, if robots.txt is implemented only after the registrant is put on notice of third party rights). In such a case, a panel may be entitled to assume that appropriately evidenced prima facie reasonable factual allegations made by a complainant as to the historical use of the website to which the domain name at issue resolves are true, and that, depending on those allegations, the use of mechanisms such as "robots.txt" in the particular case may be a relevant (though not necessarily dispositive) consideration for purposes of assessing bad faith. However, the use as such of robots.txt, especially if it has been used since the inception of the website for legitimate reasons (such as, possibly, to prevent clickfraud), would not, in and of itself, be an indication of bad faith.

Relevant decisions:

The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438, <ifranchise.com>, Denial
Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc.
, WIPO Case No. D2008-0321, <internationalwineaccessories.com>, Denial with Dissenting Opinion
Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI)
, WIPO Case No. D2008-1216, <chillibeans.com>, Transfer
Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc.
, WIPO Case No. D2009-1580, <clara.com>, Denial
Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No. D2010-1652, <havanna.com>, Denial

3.11 Can tarnishment of a trademark form a basis for finding bad faith?

See also the relevant section in the WIPO Legal Index.

Intentional tarnishment of a complainant's trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith. However, mere conclusory allegations by a complainant are generally insufficient, with supporting proof of such claim typically being required. Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark. While it would not normally extend to the mere posting of information about a complainant, or to the posting of genuine, non-commercial criticism regarding the trademark holder, it may extend to commercially motivated criticism by (or likely on behalf of) a competitor of such trademark holder.

Relevant decisions:

Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, <britanniabuildingsociety.org>, Denial
Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign
, WIPO Case No. D2004-0206, <covancecampaign.com>, Denial
V&V Supremo Foods, Inc. v. pxlchk1@gmail.com
, WIPO Case No. D2006-1373, <1888vvsupremo.com>, Transfer
CHRISTIAN DIOR COUTURE v. Paul Farley
, WIPO Case No. D2008-0008, <annadior.com>, Transfer
Susan Scheff v. Psyborgue
, WIPO Case No. D2008-1177, <sueschefftruth.com>, Denial
Sermo, Inc. v. CatalystMD, LLC
, WIPO Case No. D2008-0647, <sermosucks.com>, Denial
Newell Operating Company v. HostMonster.Com and Andrew Shalaby
, WIPO Case No. D2008-1805, <bernzomaticinjuries.com>, Denial

4. Procedural Questions

See also the relevant section in the WIPO Legal Index.

4.1 What deference is owed to past UDRP decisions dealing with similar factual matters or legal issues?

See also the relevant section in the WIPO Legal Index.

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, while responding to the continuing evolution of the domain name system. Panels have noted in this context that the UDRP system preserves court options for parties.

Relevant decisions:

Geobra Brandstätter GmbH & Co KG v. Only Kids Inc, WIPO Case No. D2001-0841, <playmobil.net> inter alia, Transfer
PAA Laboratories GmbH v. Printing Arts America
, WIPO Case No. D2004-0338, <paa.com>, Denial
Howard Jarvis Taxpayers Association v. Paul McCauley
, WIPO Case No. D2004-0014, <hjta.com>, Denial
Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.
, WIPO Case No. D2005-0061,
<800-flowers.com>, Transfer
F. Hoffmann-La Roche AG v. Relish Enterprises
, WIPO Case No. D2007-1629, <xenicalla.com>, Transfer
Mile, Inc. v. Michael Burg
, WIPO Case No. D2010-2011, <lionsden.com>, Denial

4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?

See also the relevant section in the WIPO Legal Index.

Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel's appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.

Relevant decisions:

Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, <delikomat.com>, Transfer
AutoNation Holding Corp. v. Rabea Alawneh
, WIPO Case No. D2002-0058, <autoway.com>, Denial
De Dietrich Process Systems v. Kemtron Ireland Ltd.
, WIPO Case No. D2003-0484, <de-dietrich-process-systems.com>, Transfer
Wal-Mart Stores, Inc. v. Larus H. List
, WIPO Case No. D2008-0193, <wa1mart.com>, Transfer
NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.
, WIPO Case No. D2008-1984, <aliensport.com>, Transfer
Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited
, WIPO Case No. D2010-0776, <lurpa.com>, Transfer

On when a panel should request a supplemental filing:
Auto-C, LLC v. MustNeed.com
, WIPO Case No. D2004-0025, <autochlor.com>, Transfer
Fratelli Carli S.p.A. v. Linda Norcross
, WIPO Case No. D2006-0988, <carli.org>, Denial
Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield
, WIPO Case No. D2008-0754, <canadagoose.com>, Denial

4.3 What is the proper language of the proceeding and what are the relevant considerations in this regard?

See also the relevant section in the WIPO Legal Index.

Consensus view: The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules.

Relevant decisions:

Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247, <telsra.com>, Transfer
Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber
, WIPO Case No. D2003-0251, <artlecorbusier.com> inter alia, Denial, Transfer in Part
Advanced Magazine Publishers Inc. v. Computer Dazhong
, WIPO Case No. D2003-0668, <voguedress.com>, Transfer

Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.

In order to preserve the panel's discretion under paragraph 11 of the UDRP Rules to determine the appropriate language of proceedings in such cases, where a complainant files a complaint in a language other than that of the registration agreement, the WIPO Center will notify both parties (in all relevant languages wherever possible) of the potential language issue, inviting the complainant to either translate the complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the respondent with an opportunity to comment on or object to any such language request that may be made by the complainant. If the complainant elects not to translate but rather to submit a supported language request, such request and any comments that may be received from the respondent would normally be placed before the panel for determination of the language issue upon the panel's appointment. The panel, having made such determination, would have power to order any further procedural steps (up to and including ordering the translation of the complaint) it would deem necessary. In such cases, prior to appointment and determination by the panel, the WIPO Center would (wherever possible) send its communications to the parties in "dual language" (i.e., in both the language of the registration agreement, and the language of the complaint).

Relevant decisions:

L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585, <shuuemura.com>, Transfer
Deutsche Messe AG v. Kim Hyungho
, WIPO Case No. D2003-0679, <cebit.com>, Transfer
SWX Swiss Exchange v. SWX Financial LTD
, WIPO Case No. D2008-0400, <swxtrader.com>, Transfer
MySpace Inc. v. Will Eom
, WIPO Case No. D2008-0448, <mypsace.com>, Transfer
Fissler GmbH v. Chin Jang Ho
, WIPO Case No. D2008-1002, <fissler.com>, Transfer
Zappos.com, Inc. v. Zufu aka Huahaotrade
, WIPO Case No. D2008-1191, <shop-zappos.com>, Transfer
Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583, <bbsrc.com>, Transfer

4.4 Under what circumstances can a refiled case be accepted?

See also the relevant section in the WIPO Legal Index.

Consensus view: A refiled case concerns 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 in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.

In certain, highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and that it was possible that the future behavior of the respondent might confirm bad faith registration and use after all), a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted. Where this has occurred, the extent to which any such previously-stipulated panel conditions may have been met in any refiled complaint may also be a relevant consideration in determining whether such refiled complaint should be accepted.

A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant's failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking. [See further paragraph 4.17.]

Relevant decisions:

Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, <creo-scitex.com>, Transfer
Maruti Udyog Ltd. v. maruti.com
, WIPO Case No. D2003-0073, <maruti.com>, Transfer
AB Svenska Spel v. Andrey Zacharov
, WIPO Case No. D2003-0527, <svenskaspel.com>, Transfer
Alpine Entertainment Group, Inc. v. Walter Alvarez
, WIPO Case No. D2007-1082, <realspanking.com>, Transfer
Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc.
, WIPO Case No. D2007-1856, <shawrugsonline.com>, Transfer
GetMore A/S v. Sooyong Kim
, WIPO Case No. D2009-0357, <getmore.com>, Denial
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom
, WIPO Case No. D2009-0540, <長江.com>, Denial
Giochi Preziosi S.P.A. v. VGMD NetWeb S.L
., WIPO Case No. D2009-0542, <gormiti.mobi>, Denial
Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057, <yellowpage-adelaide.com> inter alia, Transfer

4.5 May a panel perform independent research when reaching a decision?

See also the relevant section in the WIPO Legal Index.

Consensus view: A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. A panel may also rely on personal knowledge. If a panel intends to rely on information from these or other sources outside the pleadings, especially where such information is not regarded as obvious, it will normally consider issuing a procedural order to the parties to give them an opportunity to comment. Alternatively or additionally, if the panel feels that it requires supplemental information to make a decision in a proceeding, it can issue a procedural order to the parties requesting the submission of such information.

Relevant decisions:

Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070, <nestlefoods.com>, Transfer
Hesco Bastion Limited v. The Trading Force Limited
, WIPO Case No. D2002-1038, <hescobastion.com>, Transfer
Howard Jarvis Taxpayers Association v. Paul McCauley
, WIPO Case No. D2004-0014, <hjta.com>, Denial
National Football League v. Thomas Trainer
, WIPO Case No. D2006-1440, <nflnetwork.com>, Transfer
La Francaise des Jeux v. Domain Drop S.A.
, WIPO Case No. D2007-1157, <coteetmatch.com>, Transfer
Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited.
, WIPO Case No. D2008-1768, <arena.com>, Denial
Latchways PLC v. Martin Peoples
, WIPO Case No. D2010-1255, <mansafe.com>, Transfer
Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057, <yellowpage-adelaide.com> inter alia, Transfer

4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?

See also the relevant section in the WIPO Legal Index.

Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 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. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.

Relevant decisions:

The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>, Transfer
Berlitz Investment Corp. v. Stefan Tinculescu
, WIPO Case No. D2003-0465, <berlitzsucks.com>, Transfer
Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan
, WIPO Case No. D2004-0383, <brookehogan.com>, Denial
Allianz, Compañ­a de Seguros y Reaseguros S.A. v. John Michael
, WIPO Case No. D2009-0942, <Allianz-es.com>, Transfer
Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
, WIPO Case No. D2008-1036, <mancinissleepworld.com>, Denial
M. Corentin Benoit Thiercelin v. CyberDeal, Inc.
, WIPO Case No. D2010-0941, <virtualexpo.com>, Denial
Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn
, WIPO Case No. D2010-1413, <intopicmedia.org>, Denial

4.7 What is the standard of proof under the UDRP?

See also the relevant section in the WIPO Legal Index.

Consensus View: The general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.

Relevant decisions:

Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, <madonna.com>, Transfer
Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie
, WIPO Case No. D2000-1772, <tribecafilmcenter.com>, Denial
Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.
, WIPO Case No. D2003-0185, <bootiebar.com>, Denial
William S. Russell v. Mr. John Paul Batrice d/b/a the Clock Doc
, WIPO Case No. D2004-0906, <clockdoc.com>, Denial
Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd
., WIPO Case No. D2008-0745, <checkintocash.info>, Transfer
Nintendo of America Inc. v. Fernando Sascha Gutierrez
, WIPO Case No. D2009-0434, <unlimitedwiidownloads.com>, Transfer
Comservice SA v. Mdnh Inc., Brendhan Height
, WIPO Case No. D2010-1591, <comservice.com>, Denial

4.8 Under what circumstances may further domain names be added to a filed complaint?

See also the relevant section in the WIPO Legal Index.

Consensus view: Provided the complainant has relevant trademark rights [see also paragraph 1.8 above], and all relevant domain names are registered by the same domain name holder [see also paragraphs 4.15 below], additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding. For example, if it should come to light after the filing of a complaint that there are additional domain names registered by the same domain name holder which are alleged to be identical or confusingly similar to the invoked trademark, this may constitute grounds for their addition to the complaint where fair and practicable. One possible way in which this may come to light is where a complaint is filed against a privacy or proxy registration service, an underlying registrant is disclosed, such entity turns out to also be the registrant of other domain names alleged by the complainant to contravene its trademark rights for purposes of the UDRP, but not yet subject to a UDRP complaint [see further paragraph 4.9 below]. In such circumstances a reasoned request from the complainant to add additional domain names to the filed complaint may be submitted to the WIPO Center. Subject to provider acceptance, and without prejudice to panel discretion, submission of any appropriate amendments to the complaint, and payment of any fees that may apply, upon completion of the administrative compliance review of the amended complaint, such complaint may be notified to the respondent and the proceeding formally commenced on that basis.

However:
Any request for addition of domain names to a complaint only after it has been notified to the respondent and the proceeding has been formally commenced on that basis would normally need to be addressed by the panel (on appointment). Panels have in some cases been reluctant to grant such requests, where received only after appointment. Where panels grant such requests, they would typically order a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.

Relevant decisions:

Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337, <airfrancereservation.com> inter alia, Transfer
Department of Management Services, State of Florida v. Digi Real Estate Foundation
, WIPO Case No. D2007-0547, <myflorrida.com>, Transfer
Société Air France v. Kristin Hirsch, Hirsch Company
, WIPO Case No. D2008-1213, <airfrancesite.info>, Transfer

4.9 Who is the proper respondent in a case involving a privacy or proxy registration service?

See also the relevant section in the WIPO Legal Index.

In general, whoever a panel may ultimately determine to be the proper respondent in a domain name case involving a privacy or proxy registration service, there is wide recognition among panels that a complainant or provider who has correctly sent a UDRP case-communication to the WhoIs-listed registrant of record for a disputed domain name will (at least in the absence of better information) normally have discharged its communication responsibility under the UDRP Rules.

Although reference has been made by some panels to paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement, the UDRP and UDRP Rules do not contemplate the use of privacy or proxy registration services per se, nor provide express guidance on the issue. The UDRP Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. The UDRP Rules also give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP.

Accordingly, in a WIPO UDRP case in which a privacy or proxy registration service is named as the respondent in a filed complaint (e.g., because the complainant was not aware of the identity of any underlying registrant) - and the concerned registrar (or the privacy or proxy service provider) in response to a request from the WIPO Center discloses an underlying registrant of the domain name that differs from the privacy or proxy registration service which appeared in the WhoIs at the time the complaint was filed, on which the complainant may act as described in (c) below - ultimately the panel has discretion to determine the identity of the proper respondent.

Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant. Some panels, usually in cases where there has been a clear and timely disclosure, have elected to disregard the privacy or proxy service entirely and focus solely on the registrar-confirmed registrant.

WIPO panels have recognized on the issue more generally, pending any uniform instructions from ICANN on the issue, that where a disclosure of an "underlying registrant" occurs, the following is appropriate:

(a) the WIPO Center makes the (typically registrar-disclosed) "underlying registrant" information available to the complainant, and provides the complainant with an opportunity to amend the complaint to reflect that information should the complainant so choose;

(b) should a complainant choose not to amend its complaint in such circumstances, this would not normally amount to a complaint deficiency for the purpose of the WIPO Center completing its administrative responsibilities under the UDRP Rules;
(Complainants do tend to amend to reflect any disclosed registrant information, partly to avoid possible enforcement questions in the event of any subsequent transfer or cancellation order.)

(c) in practical terms, a complainant may choose to either add a disclosed underlying registrant as a co-respondent to the complaint, or replace the originally named privacy or proxy service with the disclosed "underlying registrant", or (as rarely happens) retain the privacy or proxy service as the sole named respondent; also, in any case, the complainant may choose to amend or supplement its substantive pleadings in light of any such disclosure;

(d) in light of the definition of mutual jurisdiction in the UDRP Rules, a complainant may rely for such purposes on the location of the registered domain name holder as it appeared in the WhoIs when the complaint was filed with the WIPO Center (even if that may be the location of the initially-listed proxy or privacy service);

(e) once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice. (Panels have also noted that: (i) there are limits to what can reasonably be done by parties and providers to identify an "underlying registrant" in the context of the UDRP, and if WhoIs information is not readily usable for communication purposes in such case the registrant must expect to bear any consequences; and (ii) in cases of ambiguity as to the identity of the proper respondent, what matters in terms of notification obligations under the UDRP Rules is not so much the name that may "formally" appear on the complaint, but that the latter has been duly notified to the reasonably available contact information of the "registrant", whatever its identity);

(f) preserving panel discretion to determine the identity of the proper respondent in any case in which there may be ambiguity, for abundance of caution, in its current practice (subject to further evolution of privacy issues), the WIPO Center would normally notify the case and forward a copy of the complaint on notification to any disclosed underlying registrant, as well as to the originally-named privacy or proxy service.

Relevant decisions:

Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070, <zipzoomflysucks.com>, Denial
Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,
WIPO Case No. D2007-1743, <wwwwired.com>, Transfer
F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko
, WIPO Case No. D2007-1854, <xenicalbuy.com>, Transfer
Mrs. Eva Padberg v. Eurobox Ltd.
, WIPO Case No. D2007-1886, <eva-padberg.com>, Transfer
Elvstrom Sails A/S v. Moniker Privacy Services
, WIPO Case No. D2008-0393, <elvstromsails.com>, Denial
Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services
, WIPO Case No. D2008-1179, <teenick.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC
, WIPO Case No. D2009-0057, <jenniferlopez.net> inter alia, Transfer
Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com
, WIPO Case No. D2009-0183, <mazarsrevenge.com>, Transfer
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot
, WIPO Case No. D2009-0320, <backberry.com>,Transfer
Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited
, WIPO Case No. D2009-0324, <blackberru.com> inter alia, Transfer
Hertz System, Inc. v. Domainproxyagent.com / Compsys Domain Solutions Private Limited
, WIPO Case No. D2009-0615, <www2hertz.com>, Transfer
RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262)
, WIPO Case No. D2010-0894, <rapidsharefilesdownload.com> inter alia, Transfer

However: Panels have also found, especially where a "disclosed" registrant in turn appears to be yet another privacy or proxy service, or in similar "Russian doll" scenarios, that the coming to light of such registrant may in certain conditions support a finding of breach of paragraph 8(a) of the UDRP, which cyberflight scenario may have implications for determination of respondent identity as well as for substantive findings.

Relevant decisions:

TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620, <tdstelecom.net>, Transfer
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager
, WIPO Case No. D2007-0062, <creditkeeper.com>, Transfer
CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP
, WIPO Case No. D2008-0687, <theedmontonjournal.com>, Transfer
Jay Leno v. St. Kitts Registry, Domain Names Administration
, WIPO Case No. D2009-0571, <jaylenoshow.com>, Transfer

4.10 Does delay in bringing a complaint prevent a complainant from filing under the UDRP?

See also the relevant section in the WIPO Legal Index.

Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.

However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.

Relevant decisions:

The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616, <alberteinstein.com>, Denial
Tom Cruise v. Network Operations Center / Alberta Hot Rods
, WIPO Case No. D2006-0560, <tomcruise.com>, Transfer
Tax Analysts v. eCorp
, WIPO Case No. D2007-0040, <taxanalyst.com>, Denial
Francine Drescher v. Stephen Gregory
, WIPO Case No. D2008-1825, <frandrescher.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC
, WIPO Case No. D2009-0057, <jenniferlopez.net> inter alia, Transfer
Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139, <razorbacks.com>, Denial
Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, <lionsden.com>, Denial

4.11 Can a registrar be liable as a registrant under the UDRP?

See also the relevant section in the WIPO Legal Index.

A registrar may be liable as a registrant under the UDRP where it has acted as such in the registration of a domain name. Likewise, a registration undertaken by a registrar through an associated legal entity is not for that reason shielded from the UDRP. When acting solely in its capacity as a registrar, and not as a registrant, a registrar is not subject to jurisdiction under the UDRP as a respondent.

Relevant decisions:

General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834, <gegeneralelectric.com> inter alia, Transfer
Pernod Ricard v. Tucows.com Co
, WIPO Case No. D2008-0789, <ricard.com>, Transfer

4.12 Can UDRP proceedings be suspended for purposes of settlement?

See also the relevant section in the WIPO Legal Index.

WIPO panels have recognized that UDRP proceedings may be suspended by the WIPO Center at the request of the parties to enable settlement of their dispute prior to panel appointment. Where a signed suspension request for such purpose identifying the period of time sought (typically not more than 30 days) is submitted to the WIPO Center by the complainant (and not objected to by the copied respondent) or by both parties, a notification would normally be issued to the parties and registrar advising the period of the suspension, and that the domain name should be unlocked only for the purpose of any transfer of the domain name from the registrant to the complainant under the terms of any agreed settlement between the parties. In the latter scenario, in order to encourage settlement where appropriate, WIPO will fully refund the fee advanced for the not-yet-appointed panel. A request for suspension would not normally be granted where either party objects. Given the expedited nature of UDRP proceedings, the WIPO Center will normally grant a request to extend the initial suspension by one further period of up to 30 days. A request from the parties to suspend proceedings to explore possible settlement options only after panel appointment would be at the discretion of the panel. Whether or not the proceedings have been suspended, where a settlement is found to have occurred prior to the rendering of the panel's decision, the panel would normally order the proceedings terminated in accordance with paragraph 17 of the UDRP Rules.

Relevant decisions:

AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723, <attplaza.com>, Transfer
Mori Seiki Co. Ltd. v. Texas International Property Associates
, WIPO Case No. D2007-1795, <mori-seiki.com> inter alia, Transfer
MasterCard International v. Bankrate
, WIPO Case No. D2008-0704, <mastercreditcard.com>, Transfer
F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA
, WIPO Case No. D2008-0752, <hoffman-laroche.com>, Transfer
ANOVO v. Moniker Privacy Services / Alexander Lerman
, WIPO Case No. D2008-1049, <anovo.com>, Transfer
Grundfos A/S v. Luca Mueller
, WIPO Case No. D2009-0091, <grundfosinsite.com>, Transfer
F. Hoffmann-La Roche AG v. P Martin
, WIPO Case No. D2009-0323, <alli-xenical.com>, Transfer

4.13 Can a panel decide a case under the UDRP based on a respondent's consent to transfer?

See also the relevant section in the WIPO Legal Index.

Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).

Relevant decisions:

Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190, <sassybac.com>, Transfer
Brownells, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1211, <brwonells.com>, Transfer
Ticketmaster Corporation v. Global Access,
WIPO Case No. D2007-1921, <ticketmast.com>, Transfer
Infonxx.Inc v. Lou Kerner, WildSites.com,
WIPO Case No. D2008-0434, <infonxxx.com>, Transfer
President and Fellows of Harvard College v. Texas International Property Associates - NA NA
, WIPO Case No. D2008-0597, <harvarduniversitypress.com>, Transfer
John Bowers QC v. Tom Keogan
, WIPO Case No. D2008-1720, <johnbowersqc.com>, Transfer
Malley's Candies Inc. v. Texas International Property Associates - NA NA
, WIPO Case No. D2008-1803, <malleychocolates.com> inter alia, Transfer
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot
, WIPO Case No. D2009-0320, <backberry.com>, Transfer

4.14 What is the relationship between UDRP proceedings and court proceedings?

See also the relevant section in the WIPO Legal Index.

As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either the complainant or the respondent from seeking a judicial remedies. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. A panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding. As to any previous court proceedings, it is in the UDRP panel's discretion to determine what weight to ascribe thereto, in light of all circumstances. Additionally, national courts have on occasion referred a portion of a case which concerns a domain name for determination under the UDRP. [See further paragraph 2.4 above, as many of the cases cited therein contain discussion of national law.]

Courts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a De novo hearing of the case under national law.

Relevant decisions:

August Storck KG v. Origan Firmware, WIPO Case No. D2000-0576, <nimm2.com>, Transfer
Russell Specialties Corporation v. Media Image, Inc., Casual Day.Com, and Rodney Williams
, WIPO Case No. D2002-0322, <casualday.com> inter alia, Transfer, Denial in Part
Jason Crouch and Virginia McNeill v. Clement Stein,
WIPO Case No. D2005-1201, <allemeryville.net> inter alia, Denial
Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc.
, WIPO Case No. D2008-1285, <galley.com>, Denial with Dissenting Opinion
Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants)
, WIPO Case No. D2008-1477, <aussieautoloans.net> inter alia, Denial
Tiara Hotels & Resorts LLC v. John Pepin
, WIPO Case No. D2009-0041, <essque.com>, Transfer
DNA (Housemarks) Limited v. Tucows.com Co
, WIPO Case No. D2009-0367, <dunlop.com>, Denial
BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight
, WIPO Case No. D2009-0958, <cariberealcancun.com>, Transfer, Denial in Part

See further WIPO Selection of UDRP-related Court Cases.

4.15 To what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith?

See also the relevant section in the WIPO Legal Index.

Paragraph 15 (a) of the UDRP provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable. Rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist). For example, WIPO panels have recognized that bad faith under the UDRP may be assessed by reference to the consistent body of prior UDRP decisions. Where panels have chosen to apply national law in UDRP decisions, they have done so on grounds including the location or nationality of the parties, or where a specific concept of national law is judged germane to an issue in dispute, or bearing in mind, in certain circumstances, the mutual jurisdiction election in the UDRP proceeding that would likely govern the location (and therefore the law) of any subsequent court case. [See further paragraph 2.4 above, as many of the cases cited therein contain discussion of national law.]

Relevant decisions:

FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar Sneede, WIPO Case No. D2004-0978, <fidelitybrokerageinvestmentsfraud.com> inter alia, Transfer, Denial in Part
Fashiontv.com GmbH v. Mr. Chris Olic
, WIPO Case No. D2005-0994, <fashiontv.com>, Denial
1066 Housing Association Ltd. v. Mr. D. Morgan
, WIPO Case No. D2007-1461, <1066ha.com>, Transfer
Fundación Calvin Ayre Foundation v. Erik Deutsch
, WIPO Case No. D2007-1947, <calvinayrefoundation.org>, Transfer
Sermo, Inc. v. CatalystMD, LLC
, WIPO Case No. D2008-0647, <sermosucks.com>, Denial
St Andrews Links Ltd v. Refresh Design
, WIPO Case No. D2009-0601, <theoldcourse.com>, Transfer

4.16 Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?

See also the relevant section in the WIPO Legal Index.

WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.

[See further paragraph 1.8 regarding related companies and licensees as complainants.]

Relevant decisions:
NFL Properties, Inc. inter alia v. Rusty Rahe
, WIPO Case No. D2000-0128, <arizonacardinals.com> inter alia, Transfer
Fulham Football Club (1987) Limited, et.al v. Domains by Proxy, Inc./ Official Tickets Ltd
, WIPO Case No. D2009-0331, <official-fulham-tickets.com> inter alia, Transfer
MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc.
, WIPO Case No. D2009-0985, <padresbaseball.com> inter alia, Transfer
Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof
, WIPO Case No. D2009-1661, <amstel-intercontinental.com> inter alia, Transfer, Denial in Part
Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,
WIPO Case No. D2010-0281, <aussiespeedoguy.com> inter alia, Transfer

4.17 In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made?

See also the relevant section in the WIPO Legal Index.

Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".

WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.

WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].

The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.

WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP;  the complainant's argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent's website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint.

Relevant decisions:

carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, <carsales.com>, Denial (RDNH found)
Rudy Rojas v. Gary Davis
, WIPO Case No. D2004-1081, <nativestyles.net> inter alia, Denial (RDNH denied)
Goway Travel Limited v. Tourism Australia
, WIPO Case No. D2006-0344, <downunder.travel>, Denial (RDNH found)
Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM
, WIPO Case No. D2006-0905, <proto.com>, Denial (RDNH found)
Mondial Assistance S.A.S. v. Compana LLC
, WIPO Case No. D2007-0965, <mondial.com>, Denial (RDNH denied)
Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co
, WIPO Case No. D2009-0115, <grasso.com>, Denial (RDNH denied)
Compart AG v. Compart.com / Vertical Axis, Inc
., WIPO Case No. D2009-0462, <compart.com>, Denial (RDNH denied)
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom
, WIPO Case No. D2009-0540, <長江.com>, Denial (RDNH found)
Ville de Paris v. Salient Properties LLC
, WIPO Case No. D2009-1279, <wifiparis.com>, Denial (RDNH denied)
M. Corentin Benoit Thiercelin v. CyberDeal, Inc.
, WIPO Case No. D2010-0941, <virtualexpo.com>, Denial (RDNH found)]

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