How To Lose a UDRP Case-Again

 On 28 April 2000, we started a series on how to lose a UDRP case.

You might think it is strange subject. But there seem to be an increasing number of cases where the trademark owner has failed to prove its case, and where you cannot help thinking that if the case had been presented properly, it might have won, or at least it would have had a better chance of winning.

The same goes for Respondents defending a claim; if they had put better arguments or produced better evidence, they would have had a better chance of wining and holding onto the domain name. Thus, Rule 5 of the UDRP Rules says that a Response from the domain name holder must respond to what is being said against it by the Complainant and (“r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name)”. Obviously, there will cases where the Respondent wants to hang onto the domain name and it will have to prove why it should be able to do so.

There are many examples of both situations.

So, we feel that it is worthwhile looking again at why some cases have been lost and how that result could have been avoided. We have already dealt with some of these situations in Domain Times, but we think it worthwhile going over them again, as it is so important.

The first one is the proof of a trademark that is required. It is absolutely vital that everyone working in the domain name field remembers that the most important provision in the UDRP is in Clause 4, which, after saying what are the 3 elements a complainant trademark owner has to establish, rounds it off by adding that “the complainant must prove that each of these three elements are present.”

Not “may”, but “must”, so it is compulsory. And: “prove”, i.e. prove, which means prove by evidence.

One of the things the complainant “must prove” is that it has a trademark. We all know that when the UDRP says this, it means that the complainant must prove BY EVIDENCE that it has a registered trademark or, alternatively, a common law or unregistered trademark which is regarded as being adequate.

Therefore, if you are relying on a common law or unregistered trademark, you have to prove it. It is no good just saying it or asserting it. It means proving it, and that means proving it by evidence.

The evidence that will prove it will vary from case to case. But here are some examples of evidence that have been used and which have been held by arbitrators to be good evidence of a common law trademark:

·       Evidence that you have traded under that name, say by evidence of advertisements or labels;

·       Evidence of invoices or receipts you have used with the trademark clearly stated on them;

·       Membership of a trade or business association under the name in question;

·       Evidence of trade or industry awards, honors and other recognition;

·       Evidence that you have used the word in domain names you have registered that include the trademark;

·       Evidence of websites used in the business that include the word; and

·       Evidence, if you can find it, that the relevant public has accepted that what you claim is your trademark is in fact your trademark.

Here are some of the features I recognised were good evidence in the case of:

PULSUP LTD v. Eugene Gonzales, FORUM, FA2508002169606, where the Complainant had to prove a common law trademark for ROCKET PLAY, an online casino. It did this very well by evidence that:

           *it had started its business under that name some years ago;

           *it had used that name ever since;

* it had used the name as promoting itself as “RocketPlay Casino-The  Best Casino in Canada 2023”;

* it had received “The Voice of the People Award” and numerous other awards under the brand Rocket Play; and

* it was generating a lot of business under its name, showing brand recognition by gambling afficionados.

And similar.

Remember, the evidence has to show that the claimed name is distinctive and that it had come to be recognised as the source of the goods and services promoted under that name.

Potential Complainants need to have an understanding of the kinds of cases that will and won’t succeed on this point. With regular reading of Domain Times, you will have a much better idea if your future claim will succeed and how your time and money will be well spent. By that means, you will be in a better position on HOW NOT TO LOSE A UDRP CASE!

You may read the decision in the ROCKET PLAY Case at

https://www.adrforum.com/DomainDecisions/2169606.htm.