Recent Case Notes & Commentary

A Decision Without Prejudice:

Can a UDRP panel defer a decision to see how the Respondent behaves in the future?

L-Nutra, Inc. v. Douglas Kantner

WIPO Case No. D2019-0597

29 May 2019

When adjudicating cases which contain little evidence from both sides, panels often have to tread a fine line in making their decisions. In the following case, it seems the panel has decided to cover their bases by making a judgement in favour of the respondent “without prejudice,” which leaves the door open to complaint being refiled. This in itself raises some interesting points; whether an individual panel has the authority to make such a decision, and under what exact conditions it may be appropriate to make a “without prejudice” ruling.

The Case

If anything, this case reminds us to eat healthy!

The case concerns the disputed domain name <>. L-Nutra Inc, the Complainant, deals in nutrition related products concerning longevity and holds a registered trademark for NUTRITION FOR LONGEVITY. The respondent is an American individual who incorporated Longevity Nutrition LLC in Ohio shortly before he acquired the disputed domain name.

The panel found no difficulties in adjudicating that the disputed domain name was confusingly similar to the complainant’s trademark, as the dominant elements were fully incorporated in the domain name, and thus ruled the first element of in favour of the complainant.

However, given the disputed domain name resolves to a website with nothing more than a “coming soon” page and some contact details, there was little evidence for the complainant to build a case concerning the second and third elements of the UDRP. Consequently, the merits of this case were going to centre around the reputation of the complainant’s trademark, and whether the complainant could demonstrate the respondent aimed to take advantage of the trademark’s value in registering the domain.

With regards to the second element of the policy, the panel stressed that the Complainant did not produce any evidence showing its use of the NUTRITION FOR LONGEVITY mark and did not establish any reputation for the mark. There was little evidence to suggest the respondent had a legitimate right or interest in the domain name. Ultimately, with this lack of evidence, the fact the trademark has a somewhat descriptive nature, and the respondent submitting a sworn statement that he was unaware of the complainant or its mark at the time he registered the disputed domain name, the panel could neither assume that the respondent was using the disputed domain name to mislead consumers to his web page, nor that he was using it to sell competing goods and services. As such, there was no proof that the complainant did not have a right or legitimate interest in the domain name, and as such the case was found in favour of the respondent.

In making their decision, the panel noted the limited evidence submitted by both parties. It suggested that it may be too early on in the picture to gauge whether the respondent had a legitimate interest in the domain name and whether or not he had registered and used it in bad faith. While this is not stated in the policy itself, Section 4.18 of the WIPO Jurisprudence Overview 3.0 states that panels can make findings “without prejudice,” and leave complaints with the possibility of being refiled. However, this restricted to highly limited situations where it may be possible for future respondent behaviour to cast a different light on the panel’s findings.

It is important to consider whether such a finding is appropriate in these circumstances, especially given that the UDRP is supposed to be a quick and definitive arbitration process. Leaving the door open to another complaint may result in an overly drawn out process of dispute between the two parties. That said, given the respondent’s website or company have both not yet been fully set up, and there is a plausibility that it may eventually compete with the complainant’s goods and services, there may come a time where the complainant may be able to make a winnable case. In any event, it seems that proving bad faith registration in this instance may be almost impossible, given the trademark’s lack of reputation and the Respondent’s sworn statement he did not know the Complainant or its trademark existed.

OUR COMMENT: One of the purposes of Domain Times is to encourage you to think about problems in this field. With that in mind, do you think the Panel was right in saying that a case could be finalised “without prejudice” and left in abeyance to see what happened in the future?

You might like to consider whether a UDRP panel has power to do this, when its actual power under Paragraph 4 (i) of the Policy is as follows:

i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.”

Of course the Panel must have another power that is not stated : the power to deny a complaint. The power to order that the case be left open, “without prejudice”, might be seen to be beyond this power to cancel or transfer.

A UDRP panel is an artificial creation and as such has only those powers conferred on it by the instrument that created it- the UDRP.