Originally Posted by Moniker Man
(Post 12853924)
ProjectNaked - we can probably help you with this. there can be common law trademark on a name without an actual trademark. proving first use or intent to use is the key. to win a cybersquatting case through WIPO/UDRP process, you must prove the following:
The basic rules of the UDRP are very simple, and can be deceptively so. A complaint is filed with a resolution provider along with a fee of between $1250 and $1500 for a single domain name, the resolution provider first reviews the complaint for formal compliance and a domain registrant is provided twenty days to respond to the complaint. The entire procedure is conducted on the basis of the written materials and exhibits submitted to the dispute resolution provider. There are no depositions, hearings, testimony, or the other trappings of court proceedings. The UDRP is thus much less expensive than a lawsuit, but unfortunately some panelists do not recognize that the lack of procedural safeguards is a result of the intended scope of the UDRP to what are essentially ?no-brainer? situations of clearly abusive domain name registrations.
In order to win, the complainant has to prove three things:
1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.
2. The domain registrant has no legitimate rights or interests in the domain name (other than the fact that the registrant had registered the domain name, of course).
3. The domain name has been registered and used in ?bad faith?.
However, the most common mistake made by complainants is believing that they have to prove three things.
Huh?
If you take a thoughtful look at those ?three? things listed above, the list actually expands to about six things. For example under (1), complainants will often show that the domain name is identical or similar to a trade or service mark, but sometimes fail to show that it is a trade or service mark in which they have rights. Under the UDRP, the ?rights? condition is interpreted to mean the mark owner, and not a licensee or agent of the mark owner. When the NBA attempted to obtain ?knicks.com?, their attempt failed because they did not prove that they, rather than the New York Knicks organization itself, were the owner of the mark. Conversely, a complainant will sometimes prove that the domain name is similar to a word they use to promote their product, but will fail to prove that the word is a trade or service mark, such as when Dial-A-Mattress failed in an attempt to obtain the domain name ?matress.com?, which the panel decided could not be a trademark, for the same reason that the word ?mattress? cannot be a trademark for mattresses.
Condition (3) also unfolds into two things that must be proven. First, that the domain name was registered in ?bad faith? and, second, that the domain name has been used in ?bad faith?. While the UDRP provides a list of examples of what is meant by ?bad faith?, the unifying principle of the list can be summarized as an issue of intent ? i.e. the domain name was registered with the specific intent to exploit or otherwise abuse the rights of the trademark owner. Finally, if you?ve been counting, the sixth thing the complainant has to prove is that all of the other things have happened at the same time. In the UDRP, ?two out of three? (or four out of five) will not produce a win for the complainant.
The domain registrant on the receiving end of a UDRP complaint should take Woody Allen?s famous advice to heart ? ?Eighty percent of success is showing up?. Most UDRP decisions are default cases in which the domain registrant does not file a response. There are a few reasons for this fact. First and frankly, most UDRP cases involve a domain registrant who is ripping off someone else?s trademark. These are the ?uninteresting? cases for which the UDRP was designed. Someone who is typo-squatting on variations of famous trademarks probably does not care about the UDRP. There are no monetary damages, and at the end of the day they lose a domain name which cost them pocket change in the first instance. Of the ?interesting? cases ? which might involve a ?dictionary word? being used for purposes related to its meaning, a personal name, or a business name which is being used for totally unrelated goods or services than those for which the trademark is known ? simply explaining why the domain name was registered can go a long way. Many domain registrants are confused upon receiving the bundle of papers and exhibits constituting the complaint. They may waste valuable time, out of the twenty day response period, consulting their real estate attorney or family lawyer, or even one of the many trademark attorneys who, frankly, know nothing about this obscure legal arena.
But the job of responding is, in essence, very simple. That job is to point out at least one thing, out of the six things, which the complainant has not proven. Still, out of domain name registrants who do respond, many of them fail to grasp that the objective of the complainant is to build a box. The domain registrant merely has to point out a single hole in that box. Also, a domain name dispute should not be an emotional issue. The panel does not care if the complainant is mean, ugly, or smells bad. All they are looking for is an answer to the question of ?why did this person register this domain name?? If you did not register the domain name for the reasons the complainant says that you did, then point out where the complainant is wrong. Then back that up with some evidence.
For example if you registered a domain name with the word ?shell? in it because you collect seashells, or you are in love with someone named Shelby or Michelle, then by all means include a picture of your shell collection or copies of your love letters in your response. If the only thing the panel has in front of it is one of the largest oil companies on the planet calling you a cybersquatter, and you do not bother to provide them with a simpler reason why you registered the domain name, then you can kiss your lover goodbye. Providing evidence is the difference between arguing a point and proving a point.
If you respond on your own, do not take your lead in writing style from the complaint, or from what you think a lawyer is ?supposed? to sound like. If you decide to respond to a UDRP complaint on your own, then use your own voice. Find the things the complainant has not proven. Put them in order according to the list of (1), (2), and (3) above, and simply tell the panel why the complainant is wrong. In the UDRP, along with each of the things the complainant has to prove, is a list of things the domain registrant might show in order to prove the existence of ?legitimate rights or interests? or a lack of ?bad faith?. These lists are not exhaustive, but if you can explain and show in plain words how your situation matches up with one of those defenses, then you will have gone a long way toward winning the dispute.
Finally, an attorney experienced in domain name disputes can, provide useful examples of similar cases which have been decided in favor of the domain registrant, can structure your response and your evidence in an organized and persuasive way that will make sense to a panel, and can manage what may be a confusing and unfamiliar procedure. No attorney, however, can change the facts of your particular situation, no matter how many other unrelated cases they may have won in the past. Domain name disputes, and trademark disputes generally, are what attorneys call ?fact intensive? disputes. While there are a few generally applicable principles, the bottom line in close cases is going to be determined by the facts, and how clearly they are communicated to the panel.
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