The remedies available to complainants in cybersquatting cases are the transfer or the cancellation of the infringing domain name.
Sometimes respondents agree with the requested remedy either by agreeing to a formal settlement or informally, in email exchanges following receipt of the complaint.
The UDRP Rules regulate the situation where the parties agree to settle the dispute before a decision is issued: the proceedings would be terminated upon parties reaching settlement, as per the procedure provided by the Rules, paragraph 17.
Cases where respondents informally or unilaterally consent to the remedy are not expressly regulated by the Rules. In practice, the panels would generally allow the complaint based on the consent alone. According to the WIPO Overview 3.0, section 4.10, “[i]n such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).”
Nevertheless, in certain situations, panels would proceed with a decision on the merits, depending on the circumstances of the case. Such cases would be those:
“(i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.” Section 4.10, WIPO Overview 3.0.
In this post I look at recent UDRP decisions and how panels treat such informal consent, either by allowing the complaint based on the consent, or by proceeding with a substantive decision on the merits.
Requested Remedy Allowed Based on Unilateral Consent
Cases where panels typically order the requested remedy based on the unilateral consent from the respondent are those where the respondents clearly and unequivocally agree or ask for the requested remedy to be implemented and the circumstances of the case do not require a substantive decision on the merits.
In a recent UDRP case with WIPO, the respondent offered to transfer the domain name in dispute (<githubhot.com>) to the complainant and confirmed he did not wish to participate in the proceedings. The panel considered the circumstances appropriate to order the transfer based on such unilateral consent.
Similarly, the unambiguous consent from the respondent to transfer the domain names <facebookdirectory.com> and <facebookdirectory.online> to the complainant Meta Platforms, Inc., sustained the panel’s decision to order the transfer of the domain names based on such consent. As it results from the mentioned decision, the respondent “wrote literally: “I will transfer these 2 domains”. The respondent even asked for transfer details to arrange the transfer on short notice”. The panel found that “the email communications by the Respondent to the Center undoubtedly demonstrate her consent to have the disputed domain names transferred”. A similar solution in the UDRP case concerning the domain name <lidl-family.com>, where the respondent literally wrote: “please transfer it”.
The consent without condition in the UDRP case concerning the domain name <brawlerstars.com> allowed the panel to order the transfer to the complainant solely on the basis of such consent.
In such cases, as the ones above, panels give effect to “an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis)”, as per Section 4.10, WIPO Overview 3.0, and would order the requested remedy solely on the basis of the respondent’s unilateral consent.
Substantive Decision on the Merits Despite Unilateral Consent
Nevertheless, even in the presence of a unilateral consent from the respondent, panels proceed with a decision on the merits if the circumstances require a substantive finding.
- A Substantive Decision is Necessary to Establish a Pattern of Bad Faith Conduct
One of the situations where a substantive decision would be issued is where a substantive decision would serve more broader purpose, such as for establishing a pattern of bad faith conduct, as per paragraph 4(b)(ii) of the Policy. According to the said paragraph, one of the situations that constitute evidence of registration and use of a domain name in bad faith is when the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
For a pattern of conduct to be established a substantive decision on the merits is required.
An example of such situation is in the UDRP case no. D2019-2071, concerning the domain names <1x.bet> and <1xbet.bet>, where the panel issued a decision on the merits despite the fact that the respondent had consented to the remedy requested by the complainant.
The panel considered that a substantive decision on the merits is relevant “reaching a conclusion on a ground expressly pleaded by the Complainant as establishing bad faith registration and use – namely, that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in corresponding domain names.”
- The Respondent Disclaims Bad Faith
Panels issue a decision on the merits in cases where the respondent disclaims bad faith.
An example is in the UDRP case no. D2021-4373 concerning the domain name <nestledealership.com>, where in its informal communications the respondent alleged it did not think “there is any fault from our side” and that it did not consider it had done anything wrong.
The panel proceeded with a decision on the merits, considering, in addition to the respondent disclaiming bad faith, other aspects as well: (i) that there might be a broader interest in recording a substantive decision, (ii) that it was not entirely clear that the respondent had unequivocally agreed to transfer the disputed domain name to the complainant, and that (iii) the respondent “has not provided either the information the Complainant requested from it concerning the identity and contact details of the client on whose behalf the Respondent claims to have secured the disputed domain name, nor indeed any evidence that such a party existed”.
A similar solution in the UDRP case no. D2021-2254, concerning the domain name <equifax.xyz>, where the respondent informally answered to the complaint saying that “we have no problem with transferring the domain to the complainer”, but also that “we didn’t have any clue about any trademarks” and that the domain name in dispute was created “by our software (which combines generic words together)”. The panel found appropriate to issue a decision on the merits as the respondent appeared to deny any bad faith. The panel took into account that the complainant was not accepting the respondent’s consent for the transfer (the complainant being therefore entitled to a substantive decision), and also the use of the disputed domain name.
- The Complainant Expresses a Preference for a Recorded Decision
Panels move forward with a decision on the merits if the complainant expresses a preference for a recorded decision. Such preference might be implied, where the complainant did not ask for a suspension of the proceedings in order to explore settlement options in the presence of the consent for transfer from the respondent.
An example is in the UDRP case no. D2022-1878, concerning the domain name <whatsappdailyvideo.online>, where the respondent confirmed willingness to transfer or delete the domain name in dispute. The parties were asked if they wish for the proceedings to be suspended for settlement purposes, but despite agreement from the respondent, no response was received from the complainant. Such lack of response was informative for the panel when deciding to procced with a decision on the merits.
Other circumstances that the panel considered when deciding to proceed with a decision on the merits in the above case, despite the willingness of the respondent to transfer the disputed domain name were: (i) the fact that the complainant did not reply to a correspondence from the respondent seeking to attach conditions to the taking down of his website, (ii) the fact that the disputed domain name still resolved to an active directory page, despite the fact that a “respondent in this position would usually have taken steps to deactivate the domain name in question as part of its consent”.
- Ambiguity as to the Scope of the Respondent’s Consent
Panels would issue a decision on the merits where the respondent’s consent is subject to conditions. For instance, in the UDRP case no. D2022-1912 concerning inter alia the domain name <love-onlyfans.com>, the panel considered that the respondent’s communication consenting to a deletion of one of the domain names in dispute was not sufficiently clear, as the deletion seemed “to be conditioned to its continuation on the ownership and use of the First Disputed Domain Name”. Moreover, the respondent indicated it was ready to appeal the complaint. Under those circumstances, the panel proceeded with a decision on the merits.
Along the same lines, the panel proceeded with a decision on the merits in the UDRP case no. D2021-4211 concerning the domain name <yourcause.finance>, where the respondent disputed the complainant’s title to the claimed trademark.
A similar solution in the UDRP case no. D2022-3161, concerning the domain name <cibussodexo.bio>, where the panel proceeded with a decision on the merits as:
“In the present matter, the Panel considers that the Respondent’s offer to settle, including its offer “to settle for 500$”, does not amount to or constitute an unequivocal unilateral consent to transfer the disputed domain name, and thus does not stand in the way of a reasoned adjudication of the matter.”
