When our client, domain investor, requested that we file a Response to a UDRP on DownPat.com, he admittedly had only very recently acquired the domain name at auction. The Complainant had alleged that it had a trademark for “Down Pat” in Australia, so we had to look closely at the facts to see whether or not the domain could be defended. The Australian company had 2 problems going forward: they had only APPLIED for a trademark and they never used it for their products.
So at that point, it became rather easy to defend the UDRP solely on the basis of lack of registered or common law trademark. However, we made it a point to also show legitimate business interest as a professional domain name investor and lack of “bad faith” in the registration. In an interesting decision, the 3 person panel of Andrew Christie, Clive Elliott and Hon. Neil Brown found unanimously that the Complaint was Denied due to lack of a registered or common law trademark. However, the Hon. Neil Brown went one step further. His learned opinion concluded that we would have prevailed on all 3 points. Thank you Neil Brown.
My position has always been that if the domain name is worth defending in a UDRP, the additional funds WIPO or the FORUM charges for a 3 person panel is well worth it. Our analysis of past decisions shows quite vividly, that the odds of a successful defense increase exponentially with a 3 person panel. You can pick one panelist, and you have a strong say on who the presiding panelist will be. We publish semi-annually the “track record” of each of the panelists at WIPO and the FORUM which makes it easier to know who to request as your panelist and helps to eliminate those panelists who are ever so hostile to domain investors.
Here is the Decision in the Downpat.com case:
Complainant has filed a trade mark application for DOWNPAT: Australian Trade Mark Application No. 2051313: DOWNPAT filed on November 22, 2019. This application is currently pending.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states, at section 1.1.4: “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” So, for Complainant to establish the first requirement, it needs to show that DOWNPAT is an unregistered/common law trade mark.
The WIPO Overview 3.0 states, at 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.” Section 1.3 continues: “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.”
Complainant asserts that it has taken certain preparatory steps to use the DOWNPAT trade mark. It also relies on its pending Australian Trade Mark Application and its ownership of the domain name <downpat.com.au>. However, Complainant acknowledges that it has not actually used the DOWNPAT trade mark in the course of trade. That being the case, Complainant cannot have acquired rights in DOWNPAT as an unregistered/common law trade mark.
Without trade mark rights, Complainant cannot satisfy the first requirement of the Policy. Under the circumstances, the Complaint must fail, and it is unnecessary to address the additional grounds.
Given that Complainant has failed to establish the first requirement of the Policy, it is not necessary for the Panel to address the merits of the parties’ arguments in respect of the second and third requirements.
Moreover, the majority of the Panel (Mr Elliott and Mr Christie) is of the view that it is unhelpful in this case to express an opinion on the second and third requirements. Complainant has a trade mark application pending, and it is possible that this application will, in due course, proceed to acceptance and subsequently to registration. Should that occur, it appears that Complainant would be able to satisfy the first requirement of the Policy. Whether Complainant could then file a further Complaint in respect of the Domain Name would be determined by the established principles on refiling of complaints, as set out in WIPO Overview 3.0, section 4.18. If a refiling of the complaint was permitted, it would likely be because the circumstances of the case had changed (e.g., because of legally relevant developments, availability of new evidence, etc.). In such a situation, the opinions of this Panel on the circumstances of the case currently before it would have no meaningful relevance to the later Panel considering the changed circumstances. Nevertheless, the parties might feel compelled to address those opinions in their arguments, causing unnecessary expenditure of resources by them and the later Panel. Accordingly, in the particular circumstances of this case, the majority of the Panel considers it unhelpful to express a view on the second and third requirements.
The panelist The Hon Neil Anthony Brown QC agrees with the conclusion of the Panel and wishes to add additional reasons for that conclusion.
A UDRP proceeding will fail if the Complainant fails to make out one of the three elements required to be proved. In the present case, it is clear that Complainant has not established a trade mark either by way of registration or by acquiring common law rights. Indeed, it is difficult to see how it could be argued to the contrary and the Complaint fails for that reason. However, parties go to considerable time and expense in addressing and marshalling evidence on all three elements and in an appropriate case, of which this is one, panels should consider addressing all of those elements where the facts establish a clear principle or re‑affirm an established principle. In the latter situation, such decisions can be of assistance to other parties in the making and defence of future claims under the Policy, even if they are not binding. Accordingly, it is appropriate in the present case to deal with the additional two elements.
On the issue of rights and legitimate interests, Respondent has shown, beyond any doubt at all, that it does have such a right or legitimate interest. The Domain Name consists of two clearly generic words in common use in the English language and even when they are run together, as they are to make up the Domain Name, they create another generic word. That being so, Respondent has a right to register a domain name using those words and a legitimate interest in using it for the same reason, which is that they are part of the language over which Complainant has no right to limit Respondent’s or anyone else’s use of the words. Respondent’s right and interest also come from the uncontradicted evidence that it is engaged in the legitimate business of buying, developing, and selling domain names, which was the reason it acquired the Domain Name in the first place. That right and interest are subject to the important qualification that the registrant must not use the domain name to copy or undermine a complainant’s trade mark, to target or injure it or engage in any other untoward conduct. In the present case, there is no evidence that Respondent was minded to or did engage in any such behaviour. These principles are well-established and reflected in many prior decisions, including that cited by Respondent, namely Rentsch Partner AG v. Domain Hostmaster, Whois Privacy Serviced Pty Ltd Customer ID 78529104178955, Stanley Pace, WIPO Case No. D2015 -2302. The Complaint therefore fails under the second element.
On the issue of bad faith, Complainant has not shown any evidence to suggest that Respondent registered and used the Domain Name in bad faith. Indeed, the Complainant has not made out either of those criteria. Complainant’s case is simply a few lines of text that assert two things, neither of which amounts to bad faith. First, it asserts that Respondent is not using the Domain Name, in the sense clearly meant by Complainant that it is not being used to support a website. Respondent is not obliged to use the Domain Name for a web site and in any event it is clearly using the Domain Name as part of its stock in trade of a business that buys, develops, and sells domain names. Secondly, Complainant takes exception to the fact that the Domain Name is for sale at what is, in its opinion, a “highly inflated” price. This again, is not a ground of bad faith and in any event, whether the price demanded by a seller of any commodity is excessive is, like beauty, in the eye of the beholder, and a panel could never determine whether a price was high or low, especially when there is no valuation evidence submitted. A domain name is worth what someone is prepared to pay for it. Finally, and over-riding all of the above considerations, if and when Complainant’s trade mark is registered, it will have been registered after Respondent registered the Domain Name. Accordingly, the Domain Name could not have been registered with the necessary bad faith directed at Complainant and its trade mark, which is a necessary ingredient of bad faith in these proceedings. Accordingly, the Complaint also fails on this element.
For the foregoing reasons, the Complaint is denied.
/Clive L. Elliott Q.C./
Clive L. Elliott Q.C.
/Andrew F. Christie/
Andrew F. Christie
/The Hon Neil Brown Q.C./
The Hon Neil Brown Q.C.
Date: August 11, 2020