In a recent decision by a WIPO panel, http://Decision D2017-1782.doc
the panel determined that not all controversies surrounding domain names and trademark confusion are conducive to bringing a UDRP action. In its deliberations, the panel made the following determinations:
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
Ordinarily, the Panel would now evaluate each of these three elements of the Policy as they apply to the facts of this proceeding. However, this is, as Complainant itself has admitted, no ordinary proceeding. It raises numerous complicated questions of both fact and law, including (but not limited to) the following, which apply only to the first of the three elements:
3.Has Complainant established common law rights in and to the trademark BC? As set forth in WIPO Overview 3.0, section 1.3: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” Here, it is far from clear whether Complainant has met this burden, and much of the evidence provided by Complainant is not as Complainant describes it. To cite just one example, audio advertisements that Complainant says “feature[e] use of” the BC trademark instead simply recite the Disputed Domain Names and refer to Complainant’s respective automotive dealerships by a name that does not contain the BC trademark (such as “Mazda of Ridgeland”).
In other words, despite the large size of its multiple filings, Complainant has left many questions unanswered. While the Panel could reach its decision even in light of this unclear record, the Panel instead is most troubled by the uncertainty surrounding the terms of the relationship between Complainant and Respondent. As the parties’ pleadings make clear, there is significant disagreement about these terms. As noted above, Complainant believes that it “presented the names and marks to Respondent to be registered as domain names” and that “Respondent then used this knowledge and purposefully registered the Domain Names in its own name without the permission of Complainant.” However, Respondent believes that “[t]here was never an understanding, either verbal or written, that any domain names registered in connection with the dealership web sites would be registered in the name of the Complainant” – and, an affidavit from Respondent’s representative states, “The subject domain names were NOT registered by me under the direction and instructions of the Complainant. They were registered once I determined that a particular name was available and that it would be suitable for a particular dealership website in the future. I acquired the domain names in order to develop and provide service to working websites for each dealership as a joint agreement between me and Complainant.”
Inexplicably, although the parties apparently entered into a written (but undated) agreement with respect to certain work, Complainant did not disclose the existence of this agreement, which instead was provided by Respondent in its Response. Whether Complainant did not provide it because Complainant had overlooked it, thought it inapplicable, or for some other reason is unknown. In any event, this agreement refers to specific statement(s) of work that were not provided by either party, and the agreement does not expressly refer to domain names. The only provision remotely applicable to this proceeding states that the parties “shall be co-owners of all patents, copyrights, trademarks, trade secrets and any other rights and protections connected therewith.” However, this statement, which is both broad and vague, does nothing to clarify rights to the Disputed Domain Names beyond the parties’ assertions on record.
Complainant’s assertions that it requested Respondent to register the Disputed Domain Names for Complainant seem reasonable. However, Respondent disagrees as to this point, which was not committed to writing, although on the other hand, its assertion that it has a legitimate interest in using the Disputed Domain Names for other car dealerships that have contacted it and that are associated with “BC” (such as those in British Columbia or Bergen County) is both unsubstantiated and far-fetched. Accordingly, the Panel is left in the unfortunate position of having to assess the credibility of the parties or to reach its decision notwithstanding this critical factual discrepancy.
As a previous panel wrote: “Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.” General Motors LLC v. Chad Clegg, WIPO Case No. D2012‑2196 (citing Jumblatt v. SlantMedia, WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).
Given the number of unresolved factual questions, especially the nature of the relationship between the parties and their intentions with respect to the Disputed Domain Names, the Panel finds that this is primarily a contractual dispute between the parties that is not appropriate for resolution in this proceeding. Notwithstanding this conclusion, the Panel notes that this decision need not represent the final outcome to the dispute between the parties. Paragraph 5 of the Policy makes clear that a complainant and respondent retain the right to resolve their dispute “through any court, arbitration or other proceeding that may be available.” In a court proceeding, the questions and concerns discussed above could be properly explored in ways that the Policy simply does not allow. “For good reason, this… process [under the Policy] is designed to be a fast track inexpensive process.” Quoteseek Corporation v. Internet Marketing Group, WIPO Case No. D2002‑0511. “Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, [and] live hearings. When … a party critically needs certain evidence available only by discovery forbidden by the [Policy’s] parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.”
The Neu Facebook
