Recent Case Notes & Commentary

Holding a Relevant Trademark Alone does not Guarantee UDRP Success

Haas Outdoors, Inc. v. Lewis Arch / Mossy Oak Fence

Forum Claim No. FA1803001777655

3rd May 2018


The Complainant in this dispute specialises in camouflage clothing

While the UDRP exists as a mechanism for trademark holders to assert rights against vexatious domain name registrations, Complainants must do more than simply prove they hold a trademark in relation to the domain under dispute. They must also prove that the Respondent both has no right or legitimate interest in the domain, and that they registered and used it in bad faith. One recent complainant found this out the hard way when they brought a claim for the domain name <mossyoakfence.com>.

It was clear on the evidence that the Complainant held a trademark for the term MOSSY OAK, and for the purposes of the UDRP, such a trademark was considered sufficiently similar to the disputed domain name to succeed on the first element.

However, the complainant ran into severe difficulties in proving that the respondent held no right or legitimate interest in the disputed domain name. Given the difficulties in proving a negative, it is generally established that a Complainant only make out a prima facie case under this element, with the burden of proof then shifting to the Respondent. A party is considered to hold a legitimate interest in a domain if they are commonly known by the domain name, yet the Complainant in this instance attempted to argue no such interest existed, despite conceding that the Respondent was in fact, known as ‘Mossy Oak Fence’ – identical to the domain name under dispute! As such, the complainant failed to make out even a prima facie case, and the case was over.

However, several other issues arose on the evidence that would also suggest the claim had little chance of success. Regardless of any trademark rights held by the complainant, it was abundantly clear that the Respondent was operating a bona fide fence-making business, in an area that had nothing to do with the complainant’s hunting and outdoors business. Given there was no overlap between the two parties’ industries, bad faith was unlikely to be found, as using a domain name to offer unrelated services can indicate good faith registration. The respondent’s evidence suggested that it did in fact operate a genuine business at the disputed domain, and there was nothing on the facts which suggested it was attacking the Complainant’s trademark.

Despite the significant deficiencies in this complaint, the panel did not find Reverse Domain Name Hijacking (RDNH). While one may infer that there was little on the Complainant’s evidence to suggest it had a chance of success, the panel seems to have given them the benefit of the doubt in this instance. However, it is important to note that frivolous or weak Complaints often do leave themselves vulnerable to the adverse finding of RNDH. As such, Complainants must be careful to only bring cases which have a firm footing.

Had the Respondent’s business been in a field more closely related to the Complainant’s, there may have been a genuine trademark dispute at hand. However, given that the UDRP aims to be a relatively efficient mechanism for relief in situations involving cybersquatting, disputes concerning competing and complex IP interests are better left to the courts.