As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names.
To resist a UDRP complaint, the respondent might invoke the use of a disclaimer on the website at the disputed domain name. Generally speaking, “a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith”, for example in case of legitimate resellers (WIPO Overview 3.0, Section 3.7). On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. Moreover, panels might consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.
I look below at recent UDRP decisions to see how panels treat the existence of a disclaimer from various angles under the second and the third elements of the Policy.
- Reselling activities
For reselling activities on the website at the domain name in dispute to be legitimate, the Oki Data cumulative conditions must be met. One of the conditions is that the website must accurately and prominently disclose the registrant’s relationship with the trademark owner.
In a WIPO UDRP case concerning the domain name <fragonardmsk.com>, the website was offering perfumes branded FRAGONARD; it was reproducing the complainant’s FRAGONARD trademark and its products. The website at the disputed domain name contained a disclaimer on the bottom of the page stating:
“The online store “Fragonardmsk” is not an official distributor of Fragonard. The Fragonard trademark used on our website belongs only to Fragonard. The site partially uses photographic materials from the official website of the company Fragonard – www.fragonard.com”.
Analysing the Oki Data conditions, the panel concluded that the first and the second conditions are met, as the respondent was actually using the website to offer products under the trademark at issue and only to sell such goods.
With respect to the disclaimer, while the panel held that it clearly stated that the respondent was not an official distributor of the complainant, the panel also found that the website prominently displayed the complainant’s trademark on the top of the homepage, while the disclaimer was displayed on the bottom of the page in smaller size. Moreover, the homepage imitated the official website of the complainant; the respondent also acknowledged it used copyrighted materials of the complainant. Under these circumstances, the panel concluded in this case that the website at the disputed domain name did not prominently display the disclaimer and the Oki Data test was not met.
A similar solution in the UDRP case concerning the domain name <heetsnow.com>, where the panel found that “the disclaimer is not in a prominent position and is unlikely to be seen by most users of the site. In addition, the disclaimer gives no information whatsoever as to the identity of the operator of the website or seller of the products on offer”. In addition, in this case the respondent failed to satisfy other Oki Data requirements, as the website was used to sell competing goods as well. Under the third element, the panel treated the disclaimer as an admission by the respondent that the Internet users might be confused. A similar finding in a recent decision concerning the domain name <xiaomi-store.ro>.
In another UDRP case concerning the domain name <capcutpc>, the website was used to offer unauthorized versions of the complainant’s Capcut app for Linux, Windows and Mac users. The website included a statement that:
“capcutpc.com is not an official representative or the developer of this application, game or product. Copyrighted materials belong to their respective owners.”
The panel held in this case that the Oki Data conditions are not cumulatively met as the disclaimer “did not adequately disclose the relationship, or lack thereof, between Respondent and Complainant. On the contrary, the website’s “About” page does not make any mention of Respondent’s relationship, or lack thereof, with Complainant”.
In the circumstances of the case the panel held that there was not a clear disclaimer of association (or lack thereof) with the complainant and that the domain name in dispute falsely suggested that the website is an official website of the complainant or of an entity affiliated to or endorsed by the complainant. The panel concluded that these circumstances do not confer rights or legitimate interests in the dispute domain name.
Similarly, in the UDRP case concerning the domain name <sticksiqos.com> the disclaimer “is inaccurate, and is placed at the very bottom of the site, before the copyright notice, and, therefore, may go unnoticed by the Internet users visiting the site”. An additional factor was that the commercialisation of the products on the website may have constituted an illegal activity, which can never confer rights or legitimate interests under the Policy. As regards the third element, the Panel also ruled that “as the overall circumstances of the case point to the Respondent’s bad faith, the mere existence of an inaccurate and not prominently disclosed disclaimer in the site linked to the disputed domain name, is a further circumstance that evidences the Respondent’s bad faith and its admission that Internet users may be confused”.
A similar decision in the UDRP decision concerning the domain name <warthunder.uno> and <wartunder.net>, where the websites at the disputed domain names featured the trademark of the complainant, copied elements of the complainant’s website and offered goods related to the complainant’s game. The panel considered that such use appears as an attempt to impersonate the complainant. The existence of a disclaimer included only at the bottom of the websites, “written in small dark grey font on black background, which makes it quite difficult to notice and take into account”, was likely to prevent the confusion of Internet users.
Under the third element, the panel held that “the overall circumstances of the case point to the Respondent’s bad faith, so the inclusion of the disclaimer may indeed be regarded as an admission by the Respondent that visitors to its websites may be confused about their origin and affiliation”. On the same vein, the decision concerning the domain name <iglokup.com>. Similarly, the decision concerning the domain name <thermomix2u.com>.
- Fan sites
Another possible situation is when respondents claim to use the website at the domain names in dispute for a legitimate fan site.
In a recent case concerning the domain name <capcutforpc.net>, the website was used for displaying information and links for downloading the complainant’s CapCut app and included a blog with information on the app and discussion of other editing products, including positive reviews of competitive products. The About us section indicated that the authors were putting in place a fan website. The website included a disclaimer that: “We are not the official the [sic] developer of this application, game or product.”
The panel decided that even if a disclaimer was included, “while there was a footer with a disclaimer, the website operator was not identified, the website prominently displayed the Complainant’s mark and logo, and the site provided links to (unauthorized) downloads of the Complainant’s CapCut app.”
A similar decision in the UDRP case concerning the domain name <facebook-libra.com>, where the panel has held that “the disclaimer, included in a footer at the website (visible to the Internet users at a later stage while visiting the website), is not capable to prevent that the disputed domain name creates a risk of implied affiliation or association with the Complainants (and its trademarks).”
- Fraudulent activities
In a recent UDRP case, the domain name <facebooklikesreviews.com> was used for a website promoting commercial services purporting to sell Facebook likes. The complainant contended that such activity was a fraudulent activity that it would never authorise. The website prominently displayed the FACEBOOK trademark of the complainant and also a disclaimer.
Under the second element, the panel decided that the “presence of the disclaimer on the Domain Name does not render the Respondent’s activities bona fide, because of the services offered on the Domain Name, assisting consumers in engaging in fraudulent activity on Complainant’s website”.
With respect to the third element, the Panel ruled that “although Respondent had a disclaimer on its website, this does not excuse its use of the Domain Name in this manner”. The Panel relied on section 3.7 of the WIPO Overview 3.0 mentioned above.
- Ex post disclaimers
Adding a disclaimer after the notification of the complaint coupled with the lack of response on the merits might be considered, depending on the circumstances of the case, as an admission of the complainant’s case, as the panel found in a dispute concerning the domain names <tti.social> and <ttitoken.com>, initiated by the owner of the TIK TOK trademarks.
Likewise, in a decision concerning the domain names <michelingirl.com> and <themichelingirl.com>, the panel held that the disclaimer “was only added after the Complaint was filed, presumably at the same time as the stars for the MICHELIN rosette-style logo were replaced with ordinary stars. These amendments are ex post facto and cannot be accorded much evidential weight”.
Moreover, an offer from respondent to post a disclaimer might not cure bad faith in the circumstances of the case; rather, it could be viewed as an admission by the respondent that users may be confused.
