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Recent Case Notes & Commentary

Evidence, Proof and Inference in UDRP proceedings

Ubisoft Mobile Games v. Registration Private, Domain By Proxy, LLC / UEO Solutions

Case No. D2019-1744

December 23, 2019

One of the biggest hurdles a Complainant must jump over for their UDRP claim to succeed is proving that the disputed domain was registered in bad faith. First and foremost, this requires the Complainant to have acquired its trademark rights before the Respondent registered the disputed domain name. Usually, determining this sequence of events is relatively straightforward for the panel; it can rely on the relevant trademark office and domain registrar’s records for dates. However, in more complex cases, which concern common law marks and disagreements of the facts, the ways in which a Panel's findings emerge from the evidence can complexity. Through analysing a recent case, Ubisoft Mobile Games v. Registration Private, Domain By Proxy, LLC / UEO Solutions, we can see the processes by which panels draw inferences from the evidence, and how they make findings in the face of contradictory claims.

The claim at hand concerns the disputed domain name <>. The Complainant, well-known video game producer Ubisoft, acquired the business of Ketchapp SARL in 2016, who specialises in making iPhone games. The disputed domain name, <> was registered by the Respondent in November 2012, but the Complainant only acquired trademark rights for KETCHAPP in December 2014.

Ordinarily, it would be almost impossible to prove that the domain was registered in bad faith in these circumstances, since there was no trademark at the time the domain was registered. However, the Complainant argued that its Ketchapp business had been providing goods and services since early 2012, and that the Respondent sought to take advantage of its then-unregistered trademark. To succeed with this line of argument, the Complainant would need to prove that it both held a common law trademark at the time of domain registration, and that the Respondent knew about the trademark and sought to take unfair advantage of it by registering the domain.

To make its case and first establish its common law rights, the Complainant highlighted that its US trademark registration indicated the KETCHAPP mark was first used in April 2012. However, other evidence provided stated the company was not actually founded until 2014, the year it made its first video game, and some two years after the Respondent registered the domain.

In accordance with the UDRP rules, the Panel issued an order seeking clarification of the Complainant’s claim that the business started in 2012. In response, the Complainant submitted a statement of incorporation showing that its Ketchapp business was incorporated in April 2012, months before the disputed domain name was registered by the Respondent.

However, this did little more than establish that the Complainant’s argument was merely possible. It still needed to prove to the panel that on balance, the respondent actually knew about, and sought to take advantage of the then unregistered KETCHAPP trademark when it registered its domain.

In making their decision, a Panel always examines the evidence for a range of valid inferences that, in their totality could tip the scales of probability in one direction or the other. In this instance, it highlighted that the only evidence concerning the Complainant’s use of the Ketchapp name and trademark was in association with the launch of its first game in 2014. Furthermore, there was nothing to suggest that its mark received any prominence until it had released several other games. The panel was unable to infer from the evidence that the Respondent had knowledge of the Complainant business or its trademark when it registered the domain. Despite the factors present which may have otherwise indicated bad faith behaviour, including the use of a privacy service and failure to respond to a cease-and-desist letter, without this key conclusion, there was no basis for the Panel to infer registration in bad faith. On the evidence at hand, the scales of probability settle firmly with the Respondent. The domain was not registered bad faith and the complaint was denied.

UDRP claims are decided first and foremost on the evidence at hand, and panels are unlikely to accept inferences based on unsubstantiated assertions.

This case is an effective reminder that the core of any successful Complaint or defence is the quality of its evidence.


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