Recent Case Notes & Commentary

EVIDENCE ON RIGHTS AND LEGITIMATE INTERESTS

To defend a domain name that is under attack from a complainant, respondents have ample scope to give any reason why they have a right or legitimate interest (an RLI) in the domain name. The Policy gives a few examples, such as where the domain name is the name of the respondent itself or a name by which the respondent is commonly known. But respondents are not limited to those examples and may give any explanation they wish.


There are three golden rules when doing this:

  1. Tell the truth.

  2. Use evidence and not just assertions.

  3. Don’t use silly arguments.


The first golden rule just set out above should be obvious. Truth will out and it is better to be truthful right from the beginning. So there is no more that we need say about that golden rule.


The second golden rule should also be obvious. There is no point in just making assertions and saying that your assertions are the real facts. You must use evidence to prove your points. Evidence could be in a document like a letter or a receipt or perhaps an advertisement. For instance, if you want to prove that the market recognises a name as your brand, you could produce newspaper advertisements for your products or receipts showing that you have sold goods under that brand.


The Third Golden Rule. It is on the third golden rule, that you should not use silly arguments, that we want to address a few comments that might be helpful to you when you are preparing your defence.


Always remember, as a respondent, that when you are drafting the Response, you have to persuade the panellist deciding the case to accept your argument, so that the panellist will decide the case in your favour. People, including panellists, find it much harder to be persuaded by an argument if it is not plausible. The defence need not be watertight, but it must be plausible, that is, it must be believable. Make sure, therefore, as far as you can, that the RLI you are going to rely on is believable. You would be surprised, but some reasons given by respondents as to why they think they are entitled to hold onto a domain name are not believable.


Here are some examples of some defences that have been rejected by UDRP panels:

(a) Speedo Holdings B.V. v. Speedo Boyz, D2003-0439 (WIPO Case, July 30, 2003).

The Complainant bringing the claim had the well-known trademark SPEEDO as the brand for its swimming costumes. The Respondent had the domain name <speedoboys.con> and used it for a website dealing with a particular genre of adult entertainment. Its argument for its RLI and for its case that it was entitled to keep the domain name was that the domain name could mean speedometer and thus refer to cars that go fast and the boys who drive them. Hence, 'boys' and that was the justification for using the term “speedoboys” in the domain name. The Panel said that this argument was

“incredulous (and that) the Respondent provides no substantiating evidence for this remarkable meaning for ‘Speedo’ in conjunction with ‘boys’”.

One could not help but agree. Respondent had used a silly argument that was transparently false and, not surprisingly, it lost the domain name.

(b) Del Monte Corporation v. David Crumpacker, D2000-0498 (WIPO Case, Aug. 21, 2000).

The Complainant had the trademark ORCHARD SELECT for its business in premium packed fruit. The Respondent registered and wanted to keep the domain name <orchardselect.com> and claimed as an RLI that it had plans to conduct a fruit sales business on the Internet under the name Orchard Select. The Panel rules this was “not credible” as there was simply no evidence to support it. The Panel said:

“Mr. Crumpacker, in his Response, made a number of unsupported assertions regarding his planned use of the ORCHARDSELECT.COM domain name. Even when the Panel provided Mr. Crumpacker with an additional opportunity to supply documented support for these assertions, he gave none. The Panel can only conclude from this absence of documented proof that Mr. Crumpackers claims of purported plans to conduct a fruit sales business on the Internet under the ORCHARD SELECT name or ORCHARDSELECT.COM domain name are not credible.”

(c) Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, D2010-2256 (WIPO Case Feb. 8, 2011).

The Complainant, the famous chocolate company, had the trademark GUYLIAN. Respondent registered the domain name <guylian.com> which was pretty brazen in itself. But the explanation for why it had chosen this domain name made it worse, because there was none. As the Panel put it, the Respondent made only

“a small number of unsupported statements (including that it was) “planning to create a brand and it picked Guylian” and that it uses the domain name for the purpose of email.”

But there was no evidence and no explanation why this would show a legitimate interest. Choosing a famous brand as the main feature of domain name is not a very sensible thing to do. Giving no reason for choosing this is a formula for defeat. It is another silly argument. No wonder the Respondent lost the domain name

(d) Dell Inc. v. Pateh Mbowe, D2004-0689 ( WIPO Case Oct. 20, 2004). Dell, the famous technology company had the trademark DELL. The Complainant registered the domain name <delltechnologies.com> and used it to advertise the fact that it was in the business of selling domain names. But using Dell’s name was not a very clever thing to do, as it looks so bad. The Panel made it clear what it thought of the Respondent’s argument by saying:

“Against this evidence, the only defence offered by Mr. Mbowe is found in his email to Dell. In that email, he argued that the word “dell” cannot be “exclusively protected” because it is a “common dictionary word meaning a secluded valley.” If Mr. Mbowe’s position was the law, it would that mean that no word could serve as a trademark if that word was also found in the dictionary. This would be a nasty surprise for such companies as Apple computers and Delta airlines. But such is not the case. While Mr. Mbowe may frolic in dells to his heart’s content, under the Policy he cannot use Dell’s trademark as part of his domain name.”


It was a silly defence if ever there were one. No wonder the Respondent lost.


We have been looking at some illustrations of the third golden rule when it comes to collecting and presenting evidence to show that you, the Respondent in the case, have a right to register the domain name and a legitimate interest in doing so. Be serious about it and be believable. Don’t use silly arguments.


Before closing, let us remind ourselves that what we are doing is collecting and presenting evidence. Evidence will help you win the case. Not putting evidence in will almost guarantee that you will lose. Above all, remember to support your argument with evidence.