19 July 2017
Although DN Disputes report that over two-thirds of all UDRP disputes are decided in favour of complainants and only 8.73% in favour of respondents, those proceedings offer the only realistic opportunity of resisting a claim for the transfer or cancellation of a generic top level domain name. That is because the courts rarely, if ever, interfere with domain name dispute resolution proceedings (see Patel v Allos Therapeutics Inc  E.T.M.R. 75. Toth v Emirates  EWHC 517,  F.S.R. 26, Yoyo.Email Ltd v Royal Bank of Scotland Group plc  EWHC 3509,  F.S.R and Ross v Playboy Enterprises International, Inc  EWHC 1379 (IPEC) (13 June 2016)).
Grounds upon which applications for the transfer of domain names can be defeated include:
- The registration of trade mark upon which the complainant relies after the registration of the disputed domain name (see paragraph 1.1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition);
- An intention to use the domain name in connection with a bona fide offering of goods or services evidenced by the formation of a company to carry on such a business, legal advice on setting up the new business, developing a website, ordering business stationery or advertising the goods or services before the respondent is aware of a complaint of cybersquatting (see paragraph 2.2 of the WIPO Overview)); and
- Evidence that a respondent is commonly known by the domain name such as a birth certificate, driving licence or correspondence in the case of individuals and certificates of incorporation, invoices and news reports in the case of companies (see paragraph 2.3 of the WIPO Overview).
If a complainant sends you a letter before complaint, be sure to acknowledge it at once and respond to it in full at the earliest opportunity. Failure to do so may be relied upon by the complainant as evidence of bad faith. If you or your legal or other professional represent present your case politely but cogently, there is a chance that the complainant will leave you alone, offer you a settlement or allow yourself to claim the moral high ground.
Each dispute resolution service provider provides online and offline response forms on their respective websites. Most of the form is straightforward but section B requires careful thought and maybe professional advice. Another important decision that a respondent must take if a complainant has asked for a decision by a single member Administrative Panel is whether to seek the appointment of a three person panel. The advantage of a three member panel is that the respondent has a say in the appointment of one of the panel members though not in the appointment of the other two. The disadvantage is that the respondent has to pay the difference in costs between a single member and a three member panel. As every panel member must sign a declaration of independence and impartiality, the benefits of appointing a three member panel will be far from obvious in most cases. The only circumstances where it might help is when cultural issues are likely to arise. In such cases, a panellist drawn from the respondent’s community may explain those issues to his or her fellow panel members.
In particularly egregious cases, you may wish to apply for a declaration that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding under rule 15 (e) of the UDRP Rules.
If you require help with the draft letter or response, my clerk usually charges £500 or the equivalent in dollars or euros for drafting a letter and £1,000 for drafting a response.
Jane Lambert +44 (0)20 7404 5252