Recent Case Notes & Commentary

A Comedy of Errors: No Jurisdiction, Exceeding File Sizes, and Backfiring Evidence


Align Technology, Inc. v. faktor plus communications FORUM Claim Number: FA2006001898708 August 1, 2020


In this case a number of discrete and avoidable errors arose in what amounted to a comedy of errors. They served only to cause headaches for the panellist and to highlight some of the less talked-about rules of the UDRP.


Align Technology made arguments which blended trademark and UDRP issues together leaving the Panel to disentangle the underlying UDRP claim from the trademark issues over which it does not have jurisdiction. Likewise, the Respondent in this matter alleged that Align Technology did not have a valid trademark because it was ‘pending de-registration’. There are two points to make about that:

  1. A trademark that is allegedly ‘pending de-registration’ is still a valid trademark – right up to the moment that it is de-registered. The holder of the registration will not lose their rights any earlier than that.

  2. If the rights or legitimate interests of a party comes down to whether there is a valid trademark, the Respondent must win. Determinations of trademark validity always fall outside the scope of the UDRP. The Panel cannot declare that one party has rights on the basis of a registered trademark if there is a genuine dispute as to the trademark validity. See Stevenson Indus., Inc. v. CPAP-PRO Online.


Watch your file size

UDRP providers impose file size limits on all communications they receive. This includes all the evidence in the complaint and the response. The limits are set out in the supplemental rules of the provider. Most limits are set at 10 MB though larger files are sometimes acceptable (see for example, Annex E to WIPO’s Supplemental Rules – Maximum size of 50 MB).


If a communication exceeds the file size limit, Panels have a discretion to accept or reject the communication. In other words, if your evidence exceeds the size limit there is a risk that it will be altogether disregarded. This discretion is applied pragmatically but beware this potentially fatal mistake. In Align Technology, Inc. v. faktor plus communications the response exceeded the limit but luckily the panel chose to accept it anyway.


Evidence of settlement discussions backfires

Align Technology’s allegation of bad faith included evidence of settlement discussions between the two parties in which the respondent offered to sell the disputed domain name. This is usually inadmissible evidence of bad faith, but it is admissible by a respondent to show they had rights in the name or to negate an allegation of bad faith (See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001). In this case, the panel used the evidence to find that the Respondent was not using the domain name in bad faith, meaning that Align Technology’s inclusion of the evidence completely backfired. Evidence of settlement discussions should be treated carefully or in many cases, not included at all.


In addition to a few other strikes against Align Technology, these errors made it far more difficult for it to win than it might have been if only they paid attention to the fine print. Accordingly, it lost.