Last day to apply for .xxx Sunrise registrations
Today is the (extended) last day to apply for .xxx Sunrise registrations, to prevent other parties from later registering a domain name with your trademark in it. More information here. I don’t think it’s been definitively decided whether the UDRP will apply to .xxx domains or whether the URS (“rapid suspension”) system will be in place; but that’s a minor detail when you can go ahead and protect your brand right now. (Also, if anyone has any definitive answers on that, let me know and I’ll update here.)
Update: UDRP does apply and URS doesn’t. Thanks to Kevin Murphy (@DomainIncite) for reminding me!
Prejudice under the UDRP
A typical question that comes up during a UDRP case is, what happens afterwards if the case is denied? Can you simply try again, or are you prevented from ever filing a UDRP complaint on that particular domain again?
The question involves the legal doctrine of prejudice, in other words, whether a matter has already been determined one way or the other. Under the UDRP, the general rule is that once a complaint has been denied, you may not file another complaint on the same domain against the same respondent. There are some limited circumstances, however, including
when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
Basically, you have to have a pretty darn good reason, otherwise the UDRP panel will say “too bad, this was already denied once, we’re not going to look at it again. If you don’t like it, you should have challenged it in a court of competent jurisdiction.”
Normally, UDRP panel decisions don’t specifically say that a complaint is denied “with prejudice,” meaning that it cannot be re-filed. However, a recent NAF decision issued a denial “without prejudice,” which I thought was interesting. In this case, which involved two domains — surveyclaim.com and surveyresearchcenter.com — the Respondent didn’t even bother to respond, and was apparently using at least one of the sites in an abusive, phishing manner. The Complainant was the University system of Michigan, which claimed to own rights to the SURVEY RESEARCH CENTER mark. The Panel found that the domain surveyclaim.com was not confusingly similar to the mark, and denied the complaint with respect to that domain on that basis, despite the fact that the domain was being obviously* used in bad faith (a false claimed association with the Complainant and phishing stuff).
*There’s nothing there on the site now, so I’m not sure what it looked like.
The Panel then went on to find that the complaint failed under the rights or legitimate interests prong of the UDRP for the surveyresearchcenter.com domain name, because the Complainant failed to provide any evidence whatsoever of what the domain was being used for. This is pretty standard stuff: a complainant must prove its case, bald assertions of fact are not sufficient, etc.
But the interesting thing was this:
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
So what does this mean, exactly? Normally, in court, it’d mean the case could be refiled, hopefully with corrections to whatever the defect was. But I’m not sure that this really comports with the WIPO Overview 2.0, #4.4, which I cited above. Certainly the evidence that was not provided here by the Complainant could have, and should have, been provided now. In a later filing, it can’t argue that this evidence wasn’t available previously. And if there’s been no change in the way the domains are being used, it would seem to be impossible to argue that there’s some new use that’s come to light since the first filing. Further, does a Panelist even have the power to issue that sort of a proclamation to a future panel, effectively saying “give them another try”? On a certain level, each UDRP is it’s own distinct animal, and cases explicitly do not have precedential authority, although in practice most UDRP panels tend to (at least sort of) treat them in that way.
All in all, it’s a completely foreseeable result when you fail to provide evidence at all, so I wonder how they’ll get around that in any potential future filing.
Disclaimers, good faith, and legitimate use
A recent WIPO case covered the use and effect of a disclaimer on a web site. The domain name in question, cineredcr.com, was registered and being used by a company based in Missouri with operations in Costa Rica (hence the “cr” part of the domain name). The Complainant objected on the basis of its numerous RED CINE trademark registrations, and claimed that the Respondent was cybersquatting on the domain name and profiting from misdirected traffic and customer confusion.
But the Panel disagreed.
It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is now used as its domain name. Respondent claims the disputed domain name was registered to continue normal business and make its services known online. A copy of the web site included in the record shows that Respondent has continually conducted and solicited its services in Costa Rica.
…
The record shows that CineRed was created in Costa Rica, July of 2007, several months before the first use of REDCINE by Complainant. Complainant has no registrations in Costa Rica. Even if Respondent knew of Complainant’s trademark rights in the U.S., it does not necessarily mean the domain name was registered in bad faith. See Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718. It is possible to adopt a domain name that is similar to another’s name in good faith and with the belief that it would not be an infringement of another’s rights. See also UMB Financial Corporation v. Cynthia Galant, WIPO Case No. 2010-1855.
On the contrary, the record supports a finding of Respondent’s good faith registration and use. Respondent offers actual services that do not compete with Complainant’s business. Respondent attempted to register <cinered.com>, the actual name of its company, but found it was taken by another party; the disputed domain name <cineredcr.com> was the next closest domain name available. Moreover, Respondent never tried to sell the domain name for profit. Rather, Respondent agreed to make changes proposed by Complainant to differentiate the web sites, and include a disclaimer at Complainant’s demand. The only condition Respondent did not concede was to transfer the disputed domain name.
The record does not support the claim that Respondent attempted to attract commercial gain by creating confusion. The companies are not direct competitors. The fact that both companies exist in the broader film or cinema industry does not necessarily create a likelihood of confusion. See Checkpoint Systems Inc. v. Check Point Software Technologies Inc.,104 F. Supp. 2d 427, 467-68 (D. N.J. 2000) aff’d 269 F.3d 270 (3d Cir. 2001) (discussing similar names in the context of broader industry do not necessarily infringe). Complainant develops and manufactures high-end cinema cameras and accessories. Respondent, on the other hand, rents production equipment for film projects in Costa Rica; they do not offer RED cameras, but they will obtain them at the request of a client. Given Respondent’s use as a legitimate film production, logistics, and rental company in Costa Rica since 2007, Complainant has not shown Respondent operated in bad faith.
Further, and more interestingly, the Panel discussed the use of a disclaimer on Respondent’s web site.
It should be noted that the use of a disclaimer on a web site does not clear a respondent of bad faith. A disclaimer may be ignored or misunderstood by Internet users, and it does nothing to dispel initial interest confusion that is inevitable from a respondent’s actions. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com“, WIPO Case No. D2000-0847 (citing Brookfield Commons Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999)). Yet the disclaimer here was added at the request of Complainant, which indicates Respondent’s good faith in use.
Initial interest confusion is probably on the decline, at least in the 9th Circuit, See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Plus, come on, you’re citing Brookfield, a 1999 case, and a 2000 UDRP decision? Most of the big players online nowadays didn’t even exist in 1999, and UDRP jurisprudence has developed a lot since that time. I’d argue that Internet users are a lot more savvy with regard to web sites that they visit now, than they were in 1999 (certainly judges are a lot more savvy!). At any rate, the ultimate decision seems correct, even if this language about “initial interest confusion” seems archaic and misplaced.
Fan sites & the UDRP
I’ve had several inquiries lately from domain owners about their ownership and use of “fan sites,” or sites that may incorporate a trademark of a famous person or business for the purposes of talking about that person or business, collecting and republishing news about them, and activities like that. The questions I get are, does the trademark owner have the right to force me to give them the domain name, am I cybersquatting on the trademark owner’s rights? The answer, at least under the UDRP, isn’t 100% clear, but there are some general guidelines to keep in mind.
First, as a threshold matter, any fan site must be “clearly active and noncommercial.” What does that mean? It means you can’t have a blank page there, you have to be making active use of it; mere passive holding of a domain name is unlikely to be held to be a “fair” use. It also means that the site must not be commercial in nature. More on that point in a bit.
As I said, this is not what I would call a “settled” area of UDRP jurisprudence. Under WIPO’s Overview 2.0, #2.5, there are two prevailing viewpoints.
View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject). (emphasis added)
…
View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet. (emphasis added)
Under the first view, a fan site which includes only a very limited number of advertisements, perhaps to offset hosting charges, might be held to be incidental or ancillary. It’s important to stress the might portion of that sentence. How much is too much advertising? It’s difficult to say. But abundant ads in sidebars and banners and footers of every page will likely result in the site being held to not be a legitimate, noncommercial fair use of the trademark. Obviously, no ads is the safest route to take, but may be the most difficult to implement.
Under the second view, the inquiry goes to the intent of the registrant. Any attempts to misleading visitors or imply a false assertion of sponsorship or connection between the registrant and the trademark owner will not be looked upon favorably, whether there are ads or not. Similarly, if the business or individual is being prevented from reflecting their own mark in the gTLD space because of the fan site, that use may not be legitimate. Obviously, this is most often seen in the case of .com domains, for example, this NAF case. But for a counterpoint, check out this case from WIPO. See also my blog post regarding cybersquatting and the 9th Circuit’s nominative fair use doctrine. I think it’s an open question whether a trademark owner has a right to all of the trademark.gTLD domains (i.e. the .net, .org, .info domains as well as the .com domain). I think there’s a good argument to be made that fair and noncommercial use of a .net or a .org as a fan site is probably stronger than a .com, and probably strongest where the trademark owner already owns the .com.
So, the bottom line is, a fan site may be defensible from attack in a UDRP proceeding, but only if a few guidelines are carefully observed in setting up the site. The further a registrant strays into commercial activity, the less likely it is that a UDRP panel will agree with the argument that the site is making fair use of the trademark.