UDRP respondent seemingly prevails due to inadequate complaint
In a decision issued by the World Intellectual Property Organisation (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP), complainant Danny Hood, owner of the registered mark DR GROW IT ALL (for a liquid organic fertiliser), was denied the transfer of the disputed domain name ‘drgrowitall.com’ on the basis that respondent Dave Lovegrove was not acting in bad faith.
The complaint was filed under unusual circumstances, as the respondent's registration of the domain name predated the complainant's trademark registration by two years. In addition, the complainant barely satisfied the requirements for evidence and argument brought forward.
The complainant represented himself, and promotes its products at ‘www.drgrowitall.com.au’. The respondent did not submit a response.
The domain name pointed to a website which advertised domain names for sale. The domain name was, according to an undated Google search provided by the complainant, listed for sale for $2 million.
On June 11 2013 the complainant filed a UDRP complaint with WIPO. To be successful in a complaint under the UDRP, a complainant must show all of the following:
- The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Before reviewing the requirements under the UDRP, the panel assessed the eligibility of the complainant to bring its complaint. The only evidence submitted by the complainant was its registration of the trademark DR GROW IT ALL and a statement that the domain name was identical to its "worldwide" mark. The lack of evidence and argument brought by the complainant hindered the decision. Nevertheless, after verification with WIPO that the complaint did meet the three requirements set above, the panel finally concluded that a decision could be made on the evidence brought by the complainant, despite it being very brief.
The threshold for the first limb of the UDRP is low, thus the complainant satisfied it easily with the limited evidence it had submitted. The complainant registered a trademark on the principal register of the US Patent and Trademark Office in December 2012, proving registered rights in a mark.
The domain name must also be viewed as identical or confusingly similar to the complainant's mark. As a well-established rule, the ‘.com’ extension is irrelevant to the decision. Therefore, the panel found that the domain name was identical to the complainant's trademark.
Addressing the second limb of the UDRP concerning the respondent's rights or legitimate interests in respect of the disputed domain name, the complainant's presented evidence and limited argument would, most probably, have been insufficient to fulfil the requirements of the second limb. However, the panel did not address this limb due to its findings concerning bad faith.
Turning to the third limb of the UDRP and the question of registration and use in bad faith, the complainant faced an uphill battle, the issue being that, at the time the respondent registered the domain name, the complainant did not have any trademark rights in the term ‘Dr Grow It All’. The domain name was registered in May 2010, and the complainant filed his mark in December 2012.
Consensus panel opinion states in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) at 3.1, that:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have first been established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
However, the WIPO Overview 2.0 provides an exception to this general rule, namely when:
"the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights."
Bad faith can be found in this situation.
The panel's decision rested on whether this particular situation was within the general rule enunciated or within the exception. Precedence informed the panel that, "where a respondent anticipated a complainant's pending trademark rights, and opportunistically registered a domain name shortly before a complainant's registration of its mark", then it could conclude there was bad faith (see General Growth Properties Inc v Rasmussen (WIPO Case No D2003-0845; MADRID 2012 SA v Scott Martin-MadridMan Websites (WIPO Case No D2003-0598).
No arguments or evidence regarding its reputation prior to the domain name being registered were put forward by the complainant. Furthermore, due to the lack of response from the respondent, there was no evidence that the domain name was being used for any legitimate purpose "other than to advertise it for sale".
As a result, the panel made a decision based on the scarce information available. It stated that "there is no evidence that the respondent had, or should have had, knowledge of pending trademark rights when it registered the disputed domain name". The domain name was thus not registered in bad faith, within the meaning of the UDRP.
In conclusion, the complaint was denied due to the complainant's lack of evidence and argument. Nevertheless, the panel issued a warning discouraging from acting in the manner the respondent did, which was clearly taking unfair advantage of the complainant's reputation.
In reaching the decision, the panel highlighted Paragraph 3(b) of the UDRP rules. Paragraph 3(b) sets out the minimum requirements for a valid complaint. As such the complainant needs to demonstrate:
- the manner in which the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- why the respondent should be considered as having no rights or legitimate interests in respect of the domain name that is subject of the complaint; and
- why the domain name should be considered as having been registered and being used in bad faith.
The panel found that the complaint barely met these requirements due to the lack of evidence provided by the complainant.
This decision highlights once more the importance of a well-drafted complaint. In addition, it reaffirms the status of the general rule that there is no bad faith when a respondent's domain name is registered before a complainant's trademark rights are filed. However, it is clear that respondents should not use this rule as a shield. Indeed, had the complainant provided sufficient evidence to demonstrate that it had a reputation and was known as Dr Grow It All prior to the trademark registration, it may well have prevailed. As such, in this case, the respondent appears to have prevailed simply because the complainant filed such an inadequate complaint.
David Taylor, Hogan Lovells LLP, Paris
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