Default respondent prevails in UDRP action
In EK Success Ltd v Wang, CPR Institute for Dispute Resolution panellist Bernardo M Cremades has refused to transfer 'stickopotamus.com' to the complainant, in spite of the respondent's failure to file a response to the complaint. Cremades held that the complainant had failed to provide evidence that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
EK Success Ltd filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Wang Yi-Chi, a resident of Taiwan, in which it stated that it is the legitimate owner of US trademark registrations 2410902 and 2086267. Wang's registration and use of 'stickopotamus.com', argued EK Success, infringed its rights in these trademark registrations. EK Success did not offer any evidence to support its claim of ownership. Wang, however, failed to file a response to the complaint.
Cremades rejected the complaint and refused to order the transfer of the disputed domain name. He held that EK Success had not met the requirements of Paragraph 4(a)(i) of the UDRP (ie, that the domain name was identical or confusingly similar to a trademark or service mark in which EK Success has rights). He reasoned that because EK Success had not shown the contents of its alleged trademark registrations, it was impossible to determine whether its trademarks:
- contain the word 'stickopotamus' alone;
- appear together with other words; or
- were registered subject to a disclaimer.
In recognizing that Wang had failed to file a response to the complaint, Cremades cited Rules 5(e) and 14 of UDRP Rules, and stated that they infer that a respondent's default does not lead to an automatic ruling for the complainant. He reasoned that "the respondent's default cannot simply be construed as an admission of the allegations contained in the complaint".
Cremades hinted that EK Success would be allowed to re-file its complaint with the appropriate evidence attached, by indicating that decisions issued in UDRP proceedings do not prevent complainants from resubmitting claims in a new case, supported by proper evidence.
Susan Natland, Knobbe Martens Olson & Bear LLP, Newport Beach
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