Article by Micah Ogilvie
The recent case of Pret A Manger Limited v. Jack Tang; D2018-2059 (concerning the domain name “pret.app”) highlighted the importance of credibility under the Uniform Domain Name Dispute Resolution Policy (UDRP). Whilst the courts are better equipped to evaluate the Parties’ credibility in a dispute, much can be ascertained from the Parties’ submissions as regards their background, intentions and motive.
In the above case, the Complainant was the international sandwich shop commonly referred to as “Pret” which operates over 500 stores world-wide. The Complainant holds approximately 480 trademarks which incorporate the term PRET and in December 2017 the Complainant launched an app for smartphones and tablets in the United States of America (“United States”).
The Respondent referred to himself as an “Internet entrepreneur”, who claimed that he registered the domain name to launch a French website to help students in France find work opportunities.
As the burden of proof rests with the Complaining party, they have considerable control over how the Respondent will be perceived in a UDRP dispute. He has the task of demonstrating to a panel that the Respondent possesses the prototypical characteristics found in a “Cybersquatter”, namely, that his intentions were to take unfair advantage of Complainant’s trademark, and the driving force behind such actions was financial or otherwise.
Against a defaulting Respondent, the effects can be damaging, leading to the loss of his domain name and the label of “Cybersquatter”. In the event the Respondent decides to defend himself, he has the task of vindicating his name, demonstrating to the Panel that the Complainant’s allegations are false/ misplaced, or that he, in fact, does have a right or legitimate interest in the disputed domain name.
The Panel then has to decide the case on the merits of both Parties arguments and which presentation of the facts it believes to be more credible.
In cases where the evidence against the Respondent is overwhelming, it would be difficult for a Respondent to defend against the Complainant’s arguments (in these cases it is less likely a Respondent would submit a response), but where the facts are less clear, credibility can play a vital role in determining legitimate interest and bad faith. In such cases, the UDRP becomes a balancing act, whereby inferences can be drawn which tip the scale in favour of one of the Parties.
The Panel in Pret had such a decision to make. Even after the submission of both arguments the case was finely balanced. The Panel then directed its attention to the Respondent, stating:
“Much therefore hinges on the general credibility of the Respondent.”
In other words, the Panel had to decide whether the Complainant had done enough to establish the Respondent as a “Cybersquatter”, or is the image portrayed by the Respondent to be believed?
The Panel examined the various articles produced by the Respondent which showed his entrepreneurial acumen in previous ventures and found:
“Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.
The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.
On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture.”
It is no coincidence that a finding of legitimate interest on the part of the Respondent often translates to a Panel finding no evidence of bad faith registration or/and use. This is because Complainant’s insufficient evidence leaves a significant lacuna where the benefit of the doubt tends to favour Respondent. This is true even in cases where a higher standard exists for high volume registrants. For example, a search conducted on the website www.udrpsearch.com reveals that the online media company, Name Administration (BVI) have been involved in upwards of 50 domain disputes, with success in all but one.
These numbers demonstrate that high volume registrant + high volume disputes do not automatically mean that the Respondent is bound to lose its domain name in all cases. In fact, Respondent’s such as Name Administration (along with carefully selected legal representation), have made the most out of their unfortunate circumstances to build up a level of credibility in UDRP cases. The numerous cases filed against Name Administration have led to it becoming well-known among UDRP panels who have come to accept the company’s legitimate business structure.
Credibility in UDRP disputes can also work the other way, with a Complainant’s credibility being called into question when confronted with a request for Reverse Domain Name Hijacking (RDNH).
Factors which can affect a Complainant’s credibility in UDRP disputes include:
- Providing misleading or incomplete information to the Panel (see; Tupelo Honey Hospitality Corporation v. Ritchie Taylor; Claim No. FA1705001732247), finding “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.”)
- Utilizing counsel who ‘should know better’ (see; Pet Life LLC v. ROBERT RIESS / blue streak marketing llc; Claim Number: FA1810001810870, finding; “Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”)
- The manner and motive in which a complaint is filed i.e. following a failed acquisition (see; Bernina International AG v. Domain Administration (BVI) Case No. D2016-1811, finding; “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH”).
A trademark owner who is considering filing a UDRP complaint should not dismiss the role of credibility in its case. Trademark owners should file complaints confident that they have provided enough evidence to satisfy their burden. For example, although the second element only requires a Complainant to make out a prima facie case, more time should be spent on trying to anticipate the Respondent’s reply to ensure there are no surprises. The use of a pre-action enforcement notice to the registrant not only allows for possible resolution but also an insight into the merits of a registrant’s possible arguments.