In this post I analyse recent UDRP decisions were delay in bringing claims was addressed, and what consequences it might have on a claim.
General aspects
UDRP provides for a swift resolution of cybersquatting, namely abusive registration of Internet domain names targeting identical or confusingly similar trademarks.
The procedure generally takes about 2-3 months, with only generally one round of written submissions, no discovery, witnesses or hearings taking place. No appeals are provided, and the decision is enforced by the registrar if no court claim is filed by the respondent within 10-business days term after the registrar receives information on the rendered decision.
There is no limitation period for filing a UDRP claim, as the Policy does not provide a term for submitting UDRP claims after the date of registration of the domain name in dispute.
“Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.” Section 4.17, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
However, even if trademark owners are not precluded from filing a delayed complaint, it might have an impact on the merits of the case, particularly on the third element of the Policy, which requires the complainant to prove registration and use in bad faith.
Delay in Bringing the Claim, Complainant Successful
In the UDRP case, concerning the domain name <axa-belgium.com>, the complainant was AXA SA (France), operating since 1985 in the field of property and casualty insurance, life insurance and savings, and asset management for individuals and businesses. It had registered trademarks for AXA since 1984.
The domain name in dispute was registered on 21 February 2002 and it led to a website that was not accessible.
The panel considered this delay, and agreed with the jurisprudential principles above. It considered that the complainant is not barred from filing the complaint despite the substantial delay of 22 years, “given that the Respondent chose not to reply to the formal notices of the Complainant as per Annex 19 nor to file any response to the Complaint as such.”
Similar solutions in the case concerning the domain name <five-arrows.com>, where the claim was filed 11 years after the registration of the domain in dispute, or in the case concerning the domain name <skyscann.net>, where the claim was filed more then 18 years from the registration of the disputed domain name.
On the merits, the panel in the case concerning the domain name <axa-belgium.com> considered that the complainant established the three elements of the Policy.
In terms of the third element, it held that “the Panel accepts that AXA is a well-known trademark. Given the composition of the disputed domain name, which might typically have been used by the Complainant for a website targeting its Belgian customers, had it been available for registration, the Panel finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy”.
A similar solution in the case concerning the domain name <fanniemaeapprovedcondos.com>. The complainant was Federal National Mortgage Association DBA Fannie Mae (United States), a company providing housing finance for homebuyers and renters under the trademark FANNIE MAE since 1956.
The domain name in dispute was registered on 9 August 2011 and “has been used for a WordPress generated website that purports to provide information about “Fannie Mae Condo Approvals” and to provide a list of such properties. The approval dates provided for the listed properties are all in 2011 or 2012. The website also has displayed Google AdSense advertisements. The website does not disclose the person or entity operating the website.”
The panel considered that the 14 years delay in filing the complaint does not bar the complainant from filing the case.
The circumstances of the case pointed to the fact that the respondent “was aware of the Complainant’s business under the FANNIE MAE name and mark at the time the Domain Name was registered. The mark had been extensively used for many years prior to the Domain Name registration, and the Domain Name can only be sensibly read as incorporating that mark with words that describe properties in respect of which the Complainant would be prepared to provide lending. Further, the fact that the Respondent intended the Domain Name to be understood that way is also clear from the content that appeared on the website operating from the Domain Name since registration.”
Similarly, in the case concerning the domain name <montanadakota.com>, the panel considered that the 20 years delay in bringing the claim did not preclude the complainant from making out the third element (despite poor arguments and lack of proper evidence with the Complaint, for which the Panel correctly expressed concern).
As such, the Panel found that “substantial utility with almost a century’s worth of trading, which goes by a name almost identical to the
disputed domain name, and which it had been using in an almost identical domain name for its official website for around six years before the disputed domain name was registered“. Such evidence satisfied the Panel that that the disputed domain name was registered in the knowledge of the Complainant’s mark.
Delay in Bringing the Claim, Complaint Denied
There are however, situations where complainants fail to succeed because of the delay in filing a UDRP complaint.
In a recent UDRP case, the complainant Oris Holding AG (Switzerland) filed a complaint 25 years after the registration of the domain name <oris.com>.
The complainant had been producing Swiss made watches since 1904 and owned the trademark ORIS since 1964, including in Japan since 1986. It claimed that there is no active website at the disputed domain name and that there is no trace of serious use since it was registered 25 years ago.
The respondent, based in Japan, did not file a response, but the parties exchanged correspondence before the complaint.
Having in mind that the burden of proof rests with the complainant, the panel concluded that the complainant failed to bring evidence of bad faith registration, which required evidence “of the position at the date of registration, which in this case is over a quarter century ago”.
Likewise, the panel denied the complained filed 23 years after the registration of the domain name <addinol.com>, where the parties had a long business relationship and the respondent had competing trademark rights. The panel took into account the complexity of the case that involved court litigation between the parties and events that “have occurred during the 23 years of registration of the disputed domain name, the Panel is of the view that this is not the appropriate forum in which the dispute
should be resolved“.
A similar situation cand be found in the case concerning the domain name <traubi.com>, where the complaint was filed 21 years after the registration of the mentioned domain name.
In the above case the panel held, inter alia, that:
“[f]inally, the length of time that the disputed domain name has been in existence is of some significance. While mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits (see: WIPO Overview 3.0, section 4.17), had the Respondent’s actions in the present case been trademark-abusive in intent, it has played what appears to the Panel to be an extremely unlikely and exceptional “long game” of over two decades, apparently without doing anything during that period that might be regarded as trademark-abusive beyond holding the disputed domain name. The Complainant has therefore based its case on registration and use in bad faith largely on the fact that the disputed domain name has been passively held for much of its life.”
The complaint was also denied in the case concerning the domain name <royalportrush.com>, that was brought some 22 years after the registration of the domain name in dispute. In addition to finding no bad faith at registration, as the website had been used for a fan site most of its life, the panel in this case addressed the delay in bringing the claim with respect to the second element.
As such, the panel deemed this case as a perfect example for a case where long delays in bringing the claim and “apparent apparent acquiescence on the Complainant’s part might be held to give rise to a legitimate interest in the disputed domain name“.
Moreover, the age of the disputed domain name and the lack of proper explanations and evidence with the complaint, determined the panel to find Reverse Domain Name Hijacking in this case.
Remarks
Complainant are not barred from filing a UDRP complaint years after a domain name was registered. However, complainants must prove their case, and this might become more difficult if more time passes since registration.
As such, the third element requires also proof of bad faith at the registration date, which basically means that the complainant should prove that the respondent registered the domain name at issue with the complainant’s trademark in mind, with the intention to target it unfairly.
To succeed, complainants should submit inter alia evidence of the extent of the complainant’s business and trademark at the date of registration of the disputed domain name. Waiting too much, might make it too difficult for complainants to bring old documents proving reputation, extent of their business or any evidence that could assist the panels in determining if there was targeting intent on the Respondent’s part.
As correctly stated in the decisions above,
“[a] finding that a domain name has been registered and is being used in bad faith typically requires an inference to be drawn that the respondent has registered and is using such domain name to take advantage of its significance as a trademark owned by (usually) the complainant [..]
It follows that the Complainant, on whom the burden of proof lies, must show on the balance of probabilities that the Respondent registered the disputed domain name in the knowledge of and with intent to target the Complainant and/or its rights in the trademark concerned. This can be more difficult for a complainant to do if, as here, the disputed domain name is of a very longstanding nature.”
