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Recent Case Notes & Commentary

Bad Faith: Pushing the Limits of the UDRP

BYLT Performance LLC v. Grant Vollmer, BYLT

Case No. D2019-1851

October 14, 2019

At its core, the UDRP was designed as an efficient remedy for trademark holders that have fallen victim to deliberate and abusive domain name registrations that infringe on their trademark rights. While many cases before the UDRP are simple in nature, some involve more complex discussions and debates around the legitimacy of a Respondent’s business. Cases which concern parties with competing trademark rights both seemingly acting in good faith often push the UDRP to the extreme limits of its scope and beyond.

The following case features two parties with an almost identical name, who claim almost identical common law trademarks, yet operate in different fields. The two parties are also engaged in a civil litigation proceeding outside the UDRP. From their recent UDRP case, we cannot only see how the UDRP deals with parallel proceedings, but we can also analyse the shortcomings of the complaint itself, and why these types of cases may ultimately go beyond the scope of the UDRP.

The Complaint concerns the disputed domain name <>, and was brought under the UDRP by BLYT Performance, a US corporation specialising in sports drinks and supplements. The Respondent, a US corporation also named BYLT, which operates an online clothing and accessories business at the disputed domain name, has filed a complaint in a federal court against the Complainant, seeking a declaratory judgement of (trademark) non-infringement.

The two businesses operate in different fields, yet under an essentially identical name and alleged trademarks. The Complainant holds two marks for the acronym B.L.Y.T., both registered before the disputed domain, while the Respondent asserts common law trademark rights for BYLT, and has applied for a US trademark for the same.

The two parties' brands at the centre of this case are very similar indeed.

In bringing its case under the UDRP, the Complainant sought the transfer of the disputed domain, arguing that it held a strong, distinctive trademark which Respondent either knew, or reasonably should have known about when it started its business and registered the domain. Conversely, the Respondent argued that it had not heard of the Complainant until legal proceedings between the parties commenced, and never intended to trade on the Complainant’s reputation in its field and that it was running a genuine, good faith business.

The Respondent also requested to “Dismiss or Stay” the UDRP proceeding, in consideration of the federal court proceeding. In instances where parallel proceedings may exist, under the UDRP the Panel holds broad discretion as to whether a UDRP case goes ahead. While the UDRP remains the regular means of relief for trademark holders pursuing domain names, it is non-exclusive and does not prevent either party from seeking remedy from an appropriate and relevant court. Given that the UDRP aims to be a prompt legal process, Panels are generally reluctant to suspend or terminate proceedings because of other ongoing judicial action of unknown duration. As such, the proceeding went ahead.

For a UDRP complaint to be successful, a Complainant must essentially prove that, by registering and using a particular domain name, a Respondent has sought to directly attack and unfairly take advantage of a trademark in which it, the Complainant, has rights. Under the third element of the policy, a Complainant must prove that the Respondent both registered and used the disputed domain name in bad faith. As it is logically impossible for someone to attack a trademark in bad faith directly if it is unaware of that mark’s existence, proving this element of the Policy requires convincing the Panel that the Respondent knew or reasonably should have known about the Complainant’s trademark. In this instance, the Panel noted that the Complainant’s marks do not appear on a USPTO trademark search for BYLT, and that the Complainant did not submit any evidence supporting its sales and reputation at the time the Respondent registered the domain. Consequently, there was nothing on file that would lead the panel to believe that on balance, the Respondent knew or should have known about the trademark at the time of registering the domain name. As such, the Complainant was unable to prove the third element of the UDRP, and the complaint was denied.

However, while the Complaint was denied, the result does not preclude any potential trademark infringement by the Respondent and it could still be sued for this.. However, the UDRP is not the appropriate place for determining this. The procedure provides an efficient three step process for relief from cybersquatting. In this instance, two different parties, operating in largely different fields both operate legitimate, good faith businesses, and have competing rights for the same mark. More complex cases such as these are almost always better left to the courts.

Proving bad faith is difficult unless the Complainant has been presented by the Respondent with a smoking gun. In the absence of the smoking gun, the Complainant has to persuade the Panel to draw the inference that the Respondent had inappropriate motives at the time it registered the domain name. This will normally be a matter of balancing all the minor bits of evidence. In the present case, it just did not amount to a strong enough case. The Panel was clearly influenced by the facts that the Respondent actually had its own business being conducted under the BYLT name, there was no reason why it should have heard of the Complainant and its claim to be running a bona fide business was “credible”.


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