Commonly Known by the Domain Name in UDRP Cases
Respondents often claim to be commonly known by the domain name in dispute to prove rights or legitimate interests and to succeed against allegations of abusive domain name registration in UDRP claims.
This post discusses recent solutions of panels addressing such defense from respondents.
General aspects
To succeed in a cybersquatting case, the complainant must prove under the second element of the Policy that the respondent has no rights or legitimate interests in respect of the Internet domain name in dispute.
As this involves proving a negative, requiring information that is often primarily within the knowledge or control of the respondent, panels agree that where a “complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” Section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
One of the non-exclusive defenses provided under paragraph 4(c) of the Policy that a respondent could bring is that the “respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights”.
As reflected in the WIPO Overview 3.0, section 2.3, in cases where respondents claim that the domain name corresponds to the their given name, stage name, nickname or other moniker, “it is not necessary for the respondent to have acquired corresponding trademark or service mark rights”, but “the respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker”.
Also, “absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID; independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation.”
In addition, “panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. [..] Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting.”
I will analyse in this post recent UDRP decisions at WIPO reflecting how panels address this issue, particularly cases where respondents allege they have rights or legitimate interests in the domain name for being commonly known by it.
Respondent’s Allegation of Being Commonly Known by the DN rejected
- Fisher investment domains
In a recent case at WIPO, the complainant, Fisher Asset Management, LLC was an advisory firm trading under the FISHER INVESTMENTS trademark. It owned the domain names <fisherinvestments.com> and <fisherinvestments.org> to operate its business.
The domain names in dispute, <fisherinvestmentsltd> and <fisherprivateclientsgroup.com> were registered by a respondent Claudia Shaw, United Kingdom/Fisher Investments Private Client Group LLC, United States, and were used to resolve to registrar parking pages.
In its response, the respondent claimed that the “disputed domain names were registered on behalf of a Florida, United States, corporation founded in 2021, namely Fisher Investments Private Client Group LLC (the “Third Party LLC”), at the request of its proprietor, one Heather Fisher. The Respondent contends that the last name “Fisher” cannot be trademarked without the addition of other characteristics such as color or symbols incorporated into the design, and as such, the domains were properly and legally obtained…”.”
This case involved also issues concerning the registration of a domain name by an agent, and the panel agreed to take the disclosed company as the beneficial owner and treat the respondent as including such company as well.
On the grounds, the panel decided that the respondent has failed on a balance of probabilities to meet its burden of proof and rejected its allegations of being commonly known by the disputed domain name.
The panel considered the fact that the respondent has failed to submit any evidence required under paragraph 4(c)(ii) of the Policy, “such as identity documents, birth certificates, drivers’ licenses or the like for Heather Fisher”.
Even if such documents existed, the panel noted that:
“[w]hen considering a defense under paragraph 4(c)(ii), panels will typically assess whether there is a general lack of other indicia of cybersquatting. WIPO Overview 3.0 at section 2.3. Having a particular surname cannot confer a legitimate interest in intentionally registering domain names corresponding to that surname that take advantage of a Complainant’s mark in bad faith.”
In this case, the panel considered there are circumstances that point to a bad faith registration, respectively the fact that: (i) the trademark of the complainant was well known long before the registration of the disputed domain names, (ii) the composition of the disputed domain names related to the complainant’s industry, (iii) the respondent had been found to be targeting the complainant in bad faith in a prior UDRP case, (iv) the respondent had submitted false statements in the case, such as owning trademark registration that did not appear to exist, (v) the respondent repeatedly misstated its own name in a letter submitted to the panel, which led the panel to conclude that “the respondent appears to have been confused by its own scheme”.
Finally, the panel noted that: “[t]o the extent that the Respondent may claim rights or legitimate interests on the basis of the Third Party LLC’s corporate name, the Panel agrees with those UDRP panels that have ruled that the mere registration of a company cannot per se demonstrate that a respondent has rights or legitimate interests”, which is consistent with the UDRP jurisprudence, as explained in my earlier post, and as held in recent cases as well.
- <marieclairebeauty.com> domain name
In another case, the complainant was Marie Claire Album, a French company that was publishing a woman’s magazine with the title Marie Claire, first published in 1937.
The domain name in dispute, <marieclairebeauty.com> was registered by a respondent Marie Claire Bourgeois that was using the domain name for a website promoting her beauty and massage business in the United Kingdom called MCBeauty.
The respondent claimed she was using her birth name as part of her business and website, namely that she is trading as MCBeauty and this incorporates the initials of her name, MCB.
The panel started the analysis reminding that it is not necessary for the respondent to have acquired trademark rights, but must be “commonly known” by “Marie Claire Beauty”.
However, the evidence in the file did not support the respondent’s case. The panel found “[t]here is no evidence before the Panel that, prior to registration of the disputed domain name, the Respondent used “Marie Claire Beauty” or “Marie Claire” in connection with her business”.
Upon the request by the panel in a procedural order, the respondent submitted further evidence, “a photograph of her business card that included “MCBeauty” and “MCB””. However, “[t]he business card did not refer to “Marie Claire Beauty” or “Marie Claire”. The Respondent further provided evidence of the orders of the business cards and other business materials that included “MCBeauty” and “MCB” but once again did not include use of the name “Marie Claire Beauty” (beyond that in the disputed domain name).”
The panel concluded that “[t]he record contains no other factors demonstrating use of “Marie Claire Beauty” by the Respondent except for the disputed domain name”, and therefore found in favor of the complainant.
Respondent’s Allegation of Being Commonly Known by the DN Accepted
On the other side of the story, there are cases where respondents successfully rely on their personal names to prove they have rights or legitimate interests in a domain name.
In one case, concerning the domain name <gotohale.com>, the complainant was a law firm whose corporate name related to the surname of its principal, Patrick M. Hale, owning a registered mark for GO TO HALE since 2021. The domain name was registered in 2000 by an individual – Roger Hale, who had used it to operate a cybersecurity consultancy business.
The panel considered that the use of one’s surname in a domain name is generally sufficient evidence of a right or legitimate interest in a disputed domain name, and that the respondent registered the domain name in dispute 20 years before the complainant began using his trademark.
The panel concluded that the respondent has demonstrated that “he legitimately registered and has used the Disputed Domain Name for more than two decades for legitimate purposes having nothing to do with Complainant’s claimed mark for legal services. Respondent therefore has rights and legitimate interests in respect of the Disputed Domain Name”.
A similar case concerned the domain name <sandels.com>, where the panel found that the domain name was registered for an actor whose name was Sandels, or the case concerning the domain name <schlossberg.com>, where Mr. Schlossberg was the “founder, controlling mind and owner of the names Respondent.”
Remarks
Complainants must pay attention to cases where respondents might legitimately claim they have rights or legitimate interests in a domain name by being commonly known by it.
Where the respondent’s identity is disclosed only after the complaint is filed, they should assess if they keep or withdraw their complaint, to avoid a finding of reverse domain name hijacking as it was held, for example, in the above case concerning the domain name <gotohale.com>, or the one concerning the domain name <schlossberg.com>.