Pattern of Conduct in UDRP Cases

I will analyse in this post recent UDRP decisions at WIPO reflecting how panels address the issue of respondents being engaged in a pattern of conduct and whether this aspect is sufficient for a finding of bad faith or not.

Background

As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for solving cybersquatting cases, respectively cases where certain persons register domain names with the knowledge that they represent trademarks of other persons, with the intention to generate damages for the trademark owners and/or to incorrectly exploit the trademarks in their own advantage.

To succeed in a UDRP complaint, a complainant must prove three elements. Under the third element of the Policy, the complainant must prove that the domain name has been registered and is being used in bad faith.

Under the Policy, one of the non-exclusive scenarios that might constitute evidence of a respondent’s bad faith is that 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 (Policy, 4(b)(ii)).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that:

“[UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.

This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.

A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.

Panels have however been reluctant to find a pattern of abuse where a single UDRP case merely contains two domain names registered simultaneously by the same respondent directed at a single complainant mark.” (section 3.1.2)

Typical cases of pattern of conduct

Typical cases include those situations where the complainant’s trademark is reputed, and the respondent has been involved in previous similar cases where it was found to have targeted other trademarks, and/or the complainant’s trademarks.

• (i) Cases where respondent targeted third-party trademarks

For example, in a recent WIPO case, the panel found that the respondent had been involved as the respondent in at least 46 prior UDRP proceedings concerning third party trademarks, hence “[r]espondent has engaged in a pattern of conduct of registering other parties’ trade marks as domain names in bad faith”.

A similar situation in the case concerning the domain name <finnorfishinggear.shop>, where the panel has found a pattern of conduct, as it appeared on the facts of the case that the respondent has engaged “in a pattern of registering domain names closely corresponding with the names of known commercial enterprises and prominently using the complainants’ marks for the sale of similar product offerings”.

Similar recent cases, here, here or here.

• (ii) Cases where the respondent targeted third-party trademarks and the complainant’s trademark

In a UDRP case, the domain name in dispute <totalverifequifax.com> was used to resolve to PPC links related to the complainant’s business, and the respondent was proven to have lost numerous proceedings under the Policy, and one the cases involved the Complainant’s EQUIFAX trademark.

A similar case and decision involved the domain names <tpgtelecom.app>, <tpgtelecom.biz>, <tpgtelecom.network>, <tpgtelecom.online> and <tpgtelecom.business>, or the case concerning the domain name <lactalisvip.org>.

• (iii) Cases where the respondent targeted the complainant’s trademarks or their affiliates

In other cases, the respondent was proven to have engaged in a pattern of conduct by successively registering domain names targeting the complainant or the complainant’s related company’s trademarks, such as the case concerning the domain name <downloadgbwhatsapp.net>, where the respondent was using the domain name “to promote the downloading of an unauthorized application bearing the WHATSAPP trademark”.

A similar solution in the case concerning the domain names <facebookdownloader.app>, <facebookdownloader.org> and <facebookdownloader.pro>.

A pattern of conduct was found if the respondent targeted the complainant at least in one previous case, as it was found in the case concerning the domain names <arescapitalgropu.com>, <ares8a.com>, <ares8a.shop>, <ares8a.vip>, <ares8b.com> and <ares8b.vip>, or in the case concerning the domain names <credit-mutuel-demands.com>, <creditmutueldemands.com>, <credit-mutuel-france.com>and <credit-mutuel-france.net>.

Similar decision in the WIPO case concerning the domain name <slothype.net>, where the respondent “was unsuccessful in two prior cases under the Policy involving the same parties”.

As it results from the above examples, a pattern of conduct is normally found in cases involving well-known trademarks and similar activities of the respondent targeting such trademarks, such as decided in the case concerning the domain names <elego-brand.com> and <legoksa.com>, where the panel has considered both the fact that the “respondent has been the subject of at least five previous UDRP decisions involving similar conduct” and that he “has registered domain names incorporating other famous marks (e.g., BARBIE, NIKE, NETFLIX, TWITTER, ZARA).”

Pattern of conduct not found

However, there are cases where complainants are not able to rely on a pattern of conduct, where the overall evidence in the case file does not show a targeting intent on the respondent’s part.

In the case involving the domain name <mizuho.eu>, the respondent had been previously involved in five domain name disputes under UDRP or ADR rules for .eu domain names. It has been found to have been acted in bad faith in those cases. The complainant argued that the respondent has engaged in a bad faith pattern of cybersquatting.

However, the panel rejected the claim, finding that the disputed domain name “was registered and used in the course of a legitimate activity of trading in a dictionary word domain name, and that the Complainant has not established that it was registered or used with an intent to target the Complainant or its rights”.

The panel took into account in reaching the decision the fact that the domain name had a dictionary meaning, which the complainant itself acknowledged on its website, and the fact that the respondent:

“has put forward a reasonably plausible case, supported by evidence, as to how it came by the term “mizuho” due to its use in anime, games, and the like, and has also raised some doubt about the prominence of the Complainant’s mark in North America, outside banking and financial circles, at the time when it registered the disputed domain name”.

The circumstances of the case did not resemble those in the cases that the complainant relied upon. On the contrary, the evidence suggested that the value of the disputed domain name did not “derive primarily from the Complainant’s rights as there are multiple other meanings and uses”.

In a similar case, which concerned the domain name <franco-suisse.com>, the respondent had been involved in four previous cases under the Policy, all of them within about the last two years to the decision, and a finding of registration and use in bad faith was made in those cases. The panel denied the complaint for lack of proof that the disputed domain name was registered and used in bad faith.

The panel took into account the dictionary meaning of the disputed domain name and differences between the complainant’s trademark and the domain name in dispute, and also the fact that:

“the reputation of the Complainant’s marks appears to be limited to its line of business, and there is no evidence before the Panel that would indicate that the trademark meaning of FRANCO SUISSE had impacted its significance as a dictionary word at the point when the disputed domain name was registered.”

Similarly, in the case concerning the domain name <nallis.com>, the respondent, who claimed to be a professional domain name investor, had been found to have registered and used other domain names in bad faith. It denied having knowledge of the complainant and claimed it chose to bid for the disputed domain name in an expiring domain name action because it was short and memorable surname.

The panel found that the complainant produced no evidence of a historical or current online presence for its business, had provided no evidence speaking to the scale of its business, therefore it “fallen well short of establishing that the Respondent was likely to have been aware of the Complainant’s mark purely on the basis of its alleged fame”.

As to the previous cases invoked by the complainant against the respondent, the panel noted that the domain names in dispute reflected highly distinctive made-up words and that the “respective complainants had each demonstrated a reputation in the sense that their marks featured prominently in Google searches for the relevant terms, whereas there is no such evidence in this case”.

In the case concerning the domain names <silentnights.art>, <silentnights.life>, <silentnights.net> and <silentnights.xyz>, the panel considered whether the respondent has engaged in a pattern of conduct under paragraph 4(b)(ii) of the Policy by registering four domain names based on the same expression, as a pattern may involve multiple domain names directed against a single complainant.

However, based on the circumstances of the case, the panel denied the claim and found that:

“Given the absence of evidence about the fame and repute of the Complainants’ trademark, the comparatively limited and specialized field in which the Complainants use their trademark and, conversely, the wide scope for non-infringing uses of what is otherwise an ordinary, descriptive expression, the Panel is not prepared to infer that the Respondent has registered the disputed domain names to take advantage of their significance as the Complainants’ trademark”.

It also considered that the respondent has provided an explanation of how he came to register all the disputed domain names which, in the limited circumstances of this case, the Panel was not prepared simply to reject.

Final remarks

While each case is solved on its own, and fact specific circumstances could lead to different results, a complainant could generally rely on a pattern of conduct to prove bad faith in those cases where there is targeting intent on the respondent’s part, as described above.

There might be situations where a pattern of conduct cannot be claimed, and complainants might be sanctioned through the reverse domain name hijacking mechanism, as it occurred in the UDRP case concerning the domain names <wakefit.com> and <wake.fit>.

In the above case, the complainant claimed that the respondents were engaged in a “pattern of engaging in cybersquatting activities”, reflected in the correspondence that was carried between the parties in dispute prior to the complaint. The panel denied the request and found that the complaint constitutes an abuse of the administrative proceeding as “there is no evidence at all to support the allegation that the Respondent was engaged in a “pattern of cybersquatting activities” and that allegation should not have been made”.

Another situation that might occur in practice is where the identification data for the respondent is insufficient to determine a pattern of conduct with respondents in previous cases. In such cases, panels might refrain to find a pattern of conduct in the meaning of paragraph 4(b)(ii) of the Policy.

This was the situation, for example in the UDRP case concerning the domain name <barrickzambia.com> (where the complainant argued that the email in the contact details of the respondent was identical to the contact details of the respondent in another UDRP proceeding, suggesting as per the complainant, that the respective respondents were working in concert with each other to register and use domain names incorporating the complainant trademarks for bad faith purposes), or the case concerning the domain name <sodexho-fr.com>.