Wendy Murdoch/ Wendy Murdoch, LLC v Debbie Romero / The effortless Rider
Case: FA1612001706433
Disputed Domain Name: <effortlessrider.com>
January 13, 2017
This case is one of the comparatively rare cases where the complainant lost, although the case was undefended. It is also interesting for two other reasons:
Because the complainant lost on only one criterion, 'Rights or Legitimate Interests'. But that was enough for it to lose, because a complainant under the UDRP must prove all 3 elements, not 2 out of 3; and
It is again a (comparatively) rare case where a panellist has held that a respondent WAS, rather than WAS NOT commonly known by a domain name.
The Complainant, Wendy Murdoch provided horseback riding courses in the state of Virginia in the United States. She owned the registered U.S. trademark for EFFORTLESS RIDER since 2003.
The Respondent, Debbie Romero also provided horseback riding courses in Virginia. She registered the domain name <efffortlessrider.com> on 3 September, 2014.
The Complainant made the usual claim under the UDRP that:
(a) the domain name was confusingly similar to the complainant's mark;
(b) that the respondent had no rights or legitimate interests in the domain name; and
(c) the domain name had been registered and used in bad faith.
The respondent did not submit a response, so the case was undefended and you might think it would follow that the Complainant would win – and easily.
But two things stood in the way of that conclusion. The first was that, as the panel pointed out, in litigation the court will presume a defaulting defendant admits all of the allegations in the complaint; but not so in arbitration, including arbitration under the UDRP. Under the UDRP in particular, the complainant still has to prove all of the elements of the case even if it is undefended.
The second thing that prevented the Complainant from winning was that one of the issues it had to prove was that the Respondent had no rights or legitimate interests in the domain name. While the panel found the respondent's domain name was identical to the complainant's mark and also that the domain name had been registered and used in bad faith, it also found that the second element, that the respondent had no rights or legitimate interests in the domain name, had been proved. In other words, the Respondent have such a right or legitimate interest. How come?
Well, the Policy provides that one thing that can create such a right or interest is if the person who registered the domain name- in this case Debbie Romero- was commonly known by the domain name. She did not claim this herself as she did not file a Response. The Panel raised it on his own initiative.
Ms Romero registered a company known as Effortless Rider, LLC on September 24, 2014, 21 days subsequent to the registration of the domain name. The panel found that she “…seems to be a real business which offers real services”, and that it was common for companies to act through their organisers before being formally registered.
Accordingly, the Panel concluding that “the fact the limited liability company did not exist on the date of the domain name” was nothing to the point.
All of that lead to the conclusion that the Respondent was in fact commonly known by the domain name, giving Ms Romero a right to the domain name and a complete defence to the claim, even although she had not defended the case and had not advanced that argument, or any argument.
The interesting question is how that conclusion was reached. The panellist seems to have been influenced by the fact that Ms Romero’s company was known by its own name, which it presumably was. But the question is whether the registrant, the party who registered the domain name was known by the domain name; in other words, was the domain name simply a reflection of the name of the person who registered the domain name, which case she would have a right to the domain name.
However, the record shows that Ms Romero was the registrant. So the question has to be: was Ms Romero commonly known by the name “effortlessrider.com”?. One would have thought that in the absence of other evidence, Ms Romero would be known by the name Debbie Romero, not the domain name.
TAKEHOME MESSAGES:
AS A COMPLAINANT, DO NOT ASSUME THAT YOU WILL WIN AN UNDEFENDED CASE, BECAUSE YOU MIGHT NOT.
IT IS POSSIBLE THE PANEL WILL DECIDE THAT THE RESPONDENT IS COMMONLY KNOWN BY THE DOMAIN NAME GIVING IT A DEFENCE TO THE CLAIM.
PS: A Google search shows what seem to have been some interesting developments in the world of effortless riding.