Defending Your Client's Domain Name

A company's domain name is often the most fundamental basis for trademark and branding efforts. The time and money put into the creation and maintenance of a Web presence create a valuable business asset. Ideally, the choice of a domain name is made after conducting searches for potentially identical or confusing domains. But even if such due diligence is conducted, with the millions of domain names registered under the various extensions and country codes, it is not possible to guarantee that the domain name will not potentially conflict with someone else's trademark rights.

When such a conflict arises, a frequent response by the holder of trademark rights is to file an administrative procedure complaint. Today, there are three active ICANN-approved domain name dispute resolution panels: the World Intellectual Property Organization (“WIPO”), the National Arbitration Forum (“NAF”), and the Asian Domain Name Dispute Resolution Centre (“ADNDRC”). While WIPO's Arbitration and Mediation Center panelists decide the majority of domain name disputes, all three overwhelmingly decide domain name disputes in favor of the complainant. Statistics available for decisions made for complaints filed in 2007 show that only a very small percentage are decided in favor of the respondent:

13% of WIPO's 1,516 UDRP dispute decisions;

11.5% of NAF's 1,391 2007 UDRP dispute decisions; and

3 of the 80 ADNDRC UDRP dispute decisions.

The Basis for Proceedings Under the UDRP

The Internet Corporation for Assigned Names and Numbers (“ICANN”), formed in 1998, is a not'for-profit worldwide partnership whose mission is to keep the Internet secure, stable, and interoperable. In 1999, ICANN adopted the Dispute Resolution Policy (“Dispute Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Dispute Policy has been adopted by all accredited domain name registrars for generic top-level domain names (e.g., .com, .net, and .org), as well as some country code top-level domains (e.g., .ag, .bs, and .mw). Other country code top-level domains have not adopted the UDRP wholesale and although they have followed it as a model, there can be significant differences from the UDRP (e.g., .at, .ca, .fr). The Dispute Policy is an agreement between the registrar and the registrant that any domain name dispute will be decided according to the provisions of the UDRP, and the UDRP contains the binding, procedural rules for the resolution of a domain name dispute.

Elements of the UDRP

The mechanics of a UDRP procedure are streamlined, inexpensive, and quick. In a nutshell, it is often only a three-step process completed within two to three months: A complaint and a response are filed, and a decision is made based solely on the filings. The only authority the panel hearing the dispute has is to require the registrar to cancel the domain name or transfer it to the complainant. Dispute Policy at para. 4(i). As noted above, the vast majority of decisions result in requiring that the domain name be transferred to the complainant.

In order to be successful, a complainant must prove all three elements of the UDRP. Conversely, in order to defeat a complaint, a respondent need only defeat one of the elements. The three elements are:

1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2) Respondent has no rights or legitimate interests in respect of the domain name; and

3) Respondent's domain name has been registered and is being used in bad faith.

Id. at 4(a)(i)-(iii); UDRP at 3(b)(ix)(1)-(3).

First Element: Identical or
Confusingly Similar

If a complainant has obtained a registration for its mark, or has well-established common law rights, it can be hard to defeat the first element of identical or confusingly similar. Most frequently, this element requires an analysis of whether or not the domain name is confusingly similar to the complaining mark. Fact-specific to each case, it is imperative in a response to directly compare the bare bones of the mark and the domain name as “[t]he test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of other marketing and use factors usually considered in trademark infringement or unfair competition cases.” See GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, DAU2002-0001 (WIPO Mar. 5, 2003); The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, DAU2003-0001 (WIPO Apr. 16, 2003). Sound, appearance, and ideas suggested by the mark and the domain name are factors a panel will consider, but, because domain names are merely letters and punctuation strung together with no variation in color, capitalization, size, or font, it is a very simplistic analysis. See, e.g., Telstra Corporation Limited v. Mandino Pty Ltd, DAU2006-0006 (WIPO Jul. 28, 2006). For years, typosquatters attempted to capitalize on famous trademarks by eliminating, adding, or transposing a single letter. As a result, WIPO panelists are very leery of domain names that are only one letter off from a trademark and have held that these deliberate misspellings will not avoid a finding of confusing similarity. See, e.g., Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO Jun.
19, 2001). But, the difference of a single letter does not always require a finding of confusing similarity,
particularly when that difference changes the meaning of the word or phrase that makes up a domain name. See, e.g., eCrush.com, Inc. v. Cox Davis & Simpson, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, D2004-0552 (WIPO Sep. 11, 2004).

Second Element: No Rights or Legitimate Interests

The second element, no rights or legitimate interests, is basically an affirmative defense. Because it asks the complainant to prove a negative (i.e., that the registrant has no rights or legitimate interests in the domain name), it is often defeated by the respondent proving a positive (i.e., that the registrant does have rights or legitimate interests in the domain name). Paragraph 4(c) of the Dispute Policy helpfully lists three nonexclusive examples of “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint:”

1. use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

2. respondent has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or

3. making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Most complaints denied on this element involve a situation where the domain name is used for a complaint site, see, e.g., Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, D2000-0190 (WIPO Jul. 6, 2000), a non-commercial fan site, see, e.g., Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, D2006-0551 (WIPO Jun. 30, 2006), or is a variant of a person's name or a business name that, coincidentally, is the same as the mark. See, e.g., G. A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO Jul. 20, 2001); Gateway, Inc. v. Pixelera.com, Inc., D2000-0109 (WIPO Apr. 6, 2000).

Third Element: Bad Faith

The third element, bad faith, is actually two pronged. Paragraph 4(a)(iii) of the UDRP requires both registration in bad faith and use in bad faith and both prongs must be satisfied to prevail on this element. See, e.g., e-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001). Conversely, defeating a complaint requires the respondent to only prove the lack of bad faith in either registering or in using the domain name.

The first prong, registration in bad faith, has been overcome where it is proven that the domain name is registered prior to the trademark application being filed, see, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sep. 23, 2001), where the domain name is registered before common law rights have accrued, see, e.g., Anu Enterprises Inc. v. DomainRegistry.com Inc., FA0804001175094 (NAF May 20, 2008), where the complainant has failed to show that its trademark was well known in another country where the domain name owner resides, see, e.g., Village Resorts Ltd v. Steven Lieberman, D2001-0814 (WIPO Aug. 29, 2001), and even where the Panel simply concludes that “on the balance of probabilities” the domain name was not registered in bad faith. See, e.g., Tarkan Tevetoglu and H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti., v. Deep.Net Corp., D2002-0278 (WIPO Jun. 6, 2002).

Evidence similar to the evidence used to defeat the second element, legitimate use, can and should be used to overcome the second prong of the third element, no bad faith use. Such evidence should show respondent's bona fide offering of goods or services in connection with the domain name. See, e.g., Lodgeworks L.P. v. Sierra Hospitality, FA0802001155663 (NAF Apr. 17, 2008). And, even if there is a lack of bona fide use, that, on its own, has been found to not be enough to establish bad faith. See, e.g., Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001).

AngioDynamics, Inc. v. Sensational Serve

In 2007, WIPO panelists overwhelmingly decided in favor of complainants in UDRP actions. Respondents won in only 13% of the disputes filed. One successful respondent was Sensational Serve, owner of the domain name VENACURA.COM. AngioDynamics, Inc. v. Sensational Serve, D2007-0307 (WIPO, Apr. 26, 2007).

In this action, the complainant alleged that the domain name was identical or confusingly similar to complainant's “well known” trademark, VENACURE, mainly because the only difference was the final letter. The complaint also alleged that the respondent had no rights or legitimate interests in the domain name mainly because respondent registered its domain name after complainant registered its mark. And finally, the complaint alleged that the domain name was registered and being used in bad faith mainly due to the similarity of the domain name with the mark and because respondent was a competitor of complainant.

The respondent countered that the domain name was not confusingly similar to complainant's mark because it differed in sight, sound, and meaning, and that the typosquatting decisions cited by complainant were inapplicable because the domain name was based on the name of one of respondent's products. It further countered that respondent had rights or legitimate interests in the domain name as shown by its U.S. trademark application for VENACURA, which predated notice of the complaint, and that publication of the application was presumptive evidence that the U.S. Trademark Office found no likelihood of confusion with complainant's registered mark, VENACURE. Lastly, the response countered that there was no registration or use in bad faith as shown by the “rights and legitimate interests” evidence (i.e., the trademark application predating the UDRP complaint) and also because respondent and complainant were not competitors.

The sole panelist denied the complaint based largely on the evidence submitted by respondent, which showed that respondent had “used its product in commerce, established a website under the product's name, and applied for a United States trademark under that name well before commencement of th[e] proceeding.” AngioDynamics, D2007-0307 at 4. Respondent met the criteria of one of the three “safe harbors” delineated in the UDRP, which demonstrated rights and legitimate interests in the domain name. Id., referencing Policy para. 4(c)(i). Additionally, the panelist found no “intentional effort to appropriate the goodwill of complainant's pre-existing product.” Id. Rather, the evidence showed that the numerous vein-related products using the “VENA” prefix, the differences between the two Web sites, the differences between the products, and the differences in the intended consumers were enough to rebut the assertion of bad faith use, and that complainant failed to prove that respondent registered the domain name in bad faith.

Lessons Learned

Unlike a court action, UDRP actions are decided solely on the papers submitted and there is generally no opportunity to supplement your complaint or response. Thus, persuasive evidence is crucial to your response. Mere assertions are not sufficient in and of themselves, but must be backed by evidence. As the panelist pointed out in the AngioDynamics decision, the complainant did not supply much evidence to support its assertion that “VENACURE is a well-known mark,” while respondent provided ample evidence of numerous vein-related products using the “VENA” prefix, casting doubt on complainant's assertion. More importantly, by providing evidence of respondent's preparatory activities with regards to selling its product (i.e., use of the product in commerce, establishment of the Web site using the product name, and filing a trademark application for the product name), the panelist found that respondent met the criteria outlined in the UDRP's first safe harbour provision and thus had a genuine defense to the allegation of no rights or legitimate interests. For all practical purposes, this also overcame complainant's registered-and-used-in-bad-faith argument.

Another dissimilarity to litigation is that there is no discovery period. To mount a defense, you must look to evidence available publicly and from your client. Since the panel will work its way through each of the elements, successively, focus on the three elements, and gather anything that will bolster your arguments to disprove each one. Evidence that serves to defeat one element may also serve to defeat another, but if you defeat any one of the three elements, the Panel need not consider the others. See, e.g., Telstra Corporation Limited v. Mandino Pty Ltd, DAU2006-0006 (WIPO Jul. 28, 2006). In general, the panel will only decide the dispute based on the record before it. However, in some instances, a panel may visit a respondent's Web site or conduct limited public record research to assist with reaching a decision. See, e.g., Soci't' des Produits Nestl' SA v. Telmex Management Services, D2002-0070 (WIPO Apr. 2, 2002).

Although not successfully argued in the AngioDynamics case, highlighting the differences between the disputed domain name and the asserted trademark is the first line of defense. The panel will do a side'by-side comparison of the domain name and the trademark, so differentiate the domain name from the trademark in any way possible ' the differing number of letters, use of any distinguishing punctuation, the order of the letters, the meaning of words or portions of words that make up the domain name and the trademark. Use this trademark-type analysis of sight, sound, and meaning to persuade the panel that the domain name is not identical or confusingly similar to the trademark.

Facts and supporting evidence of a client's business (including any preparations for conducting its business), its customers, its Web site, and its products and/or services can serve as proof that: 1) it has legitimate rights to the domain name, and 2) that the domain name is not being used in bad faith. Review the UDRP's safe harbour provisions, Id. at paras. 4(c)(i)'(iii), and gather evidence that your circumstances fall within any one of them. For instance, review the dates of registration of the domain name and the dates of any trademark applications or registrations, both state and federal to show rights to the word or phrase comprising the domain name. Look for evidence to help prove common law rights to the domain name, such as the registration to do business. Look for evidence of first use of the domain name, either as a domain name or as a name “corresponding to the domain name,” such as the name of a product or service. The domain name owner should submit an affidavit attesting to this. If the domain name is being used in a non-commercial manner, consider if the site is being used as a complaint or criticism site, or some other non-commercial use.

Compare your client's products or services, as well as the targeted and actual customers, with complainant's, and differentiate them using an analysis similar to that of a trademark likelihood of confusion analysis to show that there is no bad faith use of the domain name. See, e.g., Diageo plc v. John Zuccarini, Individually and t/a Cupcake trol, D2000-0996 (WIPO Oct. 22, 2000), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

While UDRP decisions do not operate on a strict doctrine of precedent, disputes with similar fact patterns are generally treated similarly and panels will look to and rely on prior decisions for their reasoning. Panels will also sometimes defer to the reasoning found in court decisions, particularly decisions interpreting provisions of the Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. '1125). See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000). However, just as the courts do not always agree, there is not always uniformity among UDRP decisions either.

Conclusion

Statistically, the odds of successfully defending against a UDRP complaint are not favorable. However, as you prepare your response, keep in mind that in order to prevail, a complainant has to prove all three elements of the UDRP to win. As a respondent, you only have to disprove one.

Alyson B. Danowski is an associate at Kelley Drye & Warren LLP, where she is a member of the litigation and intellectual property practice groups. Danowski can be reached at [email protected].

A company's domain name is often the most fundamental basis for trademark and branding efforts. The time and money put into the creation and maintenance of a Web presence create a valuable business asset. Ideally, the choice of a domain name is made after conducting searches for potentially identical or confusing domains. But even if such due diligence is conducted, with the millions of domain names registered under the various extensions and country codes, it is not possible to guarantee that the domain name will not potentially conflict with someone else's trademark rights.

When such a conflict arises, a frequent response by the holder of trademark rights is to file an administrative procedure complaint. Today, there are three active ICANN-approved domain name dispute resolution panels: the World Intellectual Property Organization (“WIPO”), the National Arbitration Forum (“NAF”), and the Asian Domain Name Dispute Resolution Centre (“ADNDRC”). While WIPO's Arbitration and Mediation Center panelists decide the majority of domain name disputes, all three overwhelmingly decide domain name disputes in favor of the complainant. Statistics available for decisions made for complaints filed in 2007 show that only a very small percentage are decided in favor of the respondent:

13% of WIPO's 1,516 UDRP dispute decisions;

11.5% of NAF's 1,391 2007 UDRP dispute decisions; and

3 of the 80 ADNDRC UDRP dispute decisions.

The Basis for Proceedings Under the UDRP

The Internet Corporation for Assigned Names and Numbers (“ICANN”), formed in 1998, is a not'for-profit worldwide partnership whose mission is to keep the Internet secure, stable, and interoperable. In 1999, ICANN adopted the Dispute Resolution Policy (“Dispute Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Dispute Policy has been adopted by all accredited domain name registrars for generic top-level domain names (e.g., .com, .net, and .org), as well as some country code top-level domains (e.g., .ag, .bs, and .mw). Other country code top-level domains have not adopted the UDRP wholesale and although they have followed it as a model, there can be significant differences from the UDRP (e.g., .at, .ca, .fr). The Dispute Policy is an agreement between the registrar and the registrant that any domain name dispute will be decided according to the provisions of the UDRP, and the UDRP contains the binding, procedural rules for the resolution of a domain name dispute.

Elements of the UDRP

The mechanics of a UDRP procedure are streamlined, inexpensive, and quick. In a nutshell, it is often only a three-step process completed within two to three months: A complaint and a response are filed, and a decision is made based solely on the filings. The only authority the panel hearing the dispute has is to require the registrar to cancel the domain name or transfer it to the complainant. Dispute Policy at para. 4(i). As noted above, the vast majority of decisions result in requiring that the domain name be transferred to the complainant.

In order to be successful, a complainant must prove all three elements of the UDRP. Conversely, in order to defeat a complaint, a respondent need only defeat one of the elements. The three elements are:

1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2) Respondent has no rights or legitimate interests in respect of the domain name; and

3) Respondent's domain name has been registered and is being used in bad faith.

Id. at 4(a)(i)-(iii); UDRP at 3(b)(ix)(1)-(3).

First Element: Identical or
Confusingly Similar

If a complainant has obtained a registration for its mark, or has well-established common law rights, it can be hard to defeat the first element of identical or confusingly similar. Most frequently, this element requires an analysis of whether or not the domain name is confusingly similar to the complaining mark. Fact-specific to each case, it is imperative in a response to directly compare the bare bones of the mark and the domain name as “[t]he test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of other marketing and use factors usually considered in trademark infringement or unfair competition cases.” See GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, DAU2002-0001 (WIPO Mar. 5, 2003); The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, DAU2003-0001 (WIPO Apr. 16, 2003). Sound, appearance, and ideas suggested by the mark and the domain name are factors a panel will consider, but, because domain names are merely letters and punctuation strung together with no variation in color, capitalization, size, or font, it is a very simplistic analysis. See, e.g., Telstra Corporation Limited v. Mandino Pty Ltd, DAU2006-0006 (WIPO Jul. 28, 2006). For years, typosquatters attempted to capitalize on famous trademarks by eliminating, adding, or transposing a single letter. As a result, WIPO panelists are very leery of domain names that are only one letter off from a trademark and have held that these deliberate misspellings will not avoid a finding of confusing similarity. See, e.g., Disney Enterprises , Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO Jun.
19, 2001). But, the difference of a single letter does not always require a finding of confusing similarity,
particularly when that difference changes the meaning of the word or phrase that makes up a domain name. See, e.g., eCrush.com, Inc. v. Cox Davis & Simpson, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, D2004-0552 (WIPO Sep. 11, 2004).

Second Element: No Rights or Legitimate Interests

The second element, no rights or legitimate interests, is basically an affirmative defense. Because it asks the complainant to prove a negative (i.e., that the registrant has no rights or legitimate interests in the domain name), it is often defeated by the respondent proving a positive (i.e., that the registrant does have rights or legitimate interests in the domain name). Paragraph 4(c) of the Dispute Policy helpfully lists three nonexclusive examples of “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint:”

1. use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

2. respondent has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or

3. making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Most complaints denied on this element involve a situation where the domain name is used for a complaint site, see, e.g., Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, D2000-0190 (WIPO Jul. 6, 2000), a non-commercial fan site, see, e.g., Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, D2006-0551 (WIPO Jun. 30, 2006), or is a variant of a person's name or a business name that, coincidentally, is the same as the mark. See, e.g., G. A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO Jul. 20, 2001); Gateway, Inc. v. Pixelera.com, Inc., D2000-0109 (WIPO Apr. 6, 2000).

Third Element: Bad Faith

The third element, bad faith, is actually two pronged. Paragraph 4(a)(iii) of the UDRP requires both registration in bad faith and use in bad faith and both prongs must be satisfied to prevail on this element. See, e.g., e-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001). Conversely, defeating a complaint requires the respondent to only prove the lack of bad faith in either registering or in using the domain name.

The first prong, registration in bad faith, has been overcome where it is proven that the domain name is registered prior to the trademark application being filed, see, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sep. 23, 2001), where the domain name is registered before common law rights have accrued, see, e.g., Anu Enterprises Inc. v. DomainRegistry.com Inc., FA0804001175094 (NAF May 20, 2008), where the complainant has failed to show that its trademark was well known in another country where the domain name owner resides, see, e.g., Village Resorts Ltd v. Steven Lieberman, D2001-0814 (WIPO Aug. 29, 2001), and even where the Panel simply concludes that “on the balance of probabilities” the domain name was not registered in bad faith. See, e.g., Tarkan Tevetoglu and H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti., v. Deep.Net Corp., D2002-0278 (WIPO Jun. 6, 2002).

Evidence similar to the evidence used to defeat the second element, legitimate use, can and should be used to overcome the second prong of the third element, no bad faith use. Such evidence should show respondent's bona fide offering of goods or services in connection with the domain name. See, e.g., Lodgeworks L.P. v. Sierra Hospitality, FA0802001155663 (NAF Apr. 17, 2008). And, even if there is a lack of bona fide use, that, on its own, has been found to not be enough to establish bad faith. See, e.g., Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001).

AngioDynamics, Inc. v. Sensational Serve

In 2007, WIPO panelists overwhelmingly decided in favor of complainants in UDRP actions. Respondents won in only 13% of the disputes filed. One successful respondent was Sensational Serve, owner of the domain name VENACURA.COM. AngioDynamics, Inc. v. Sensational Serve, D2007-0307 (WIPO, Apr. 26, 2007).

In this action, the complainant alleged that the domain name was identical or confusingly similar to complainant's “well known” trademark, VENACURE, mainly because the only difference was the final letter. The complaint also alleged that the respondent had no rights or legitimate interests in the domain name mainly because respondent registered its domain name after complainant registered its mark. And finally, the complaint alleged that the domain name was registered and being used in bad faith mainly due to the similarity of the domain name with the mark and because respondent was a competitor of complainant.

The respondent countered that the domain name was not confusingly similar to complainant's mark because it differed in sight, sound, and meaning, and that the typosquatting decisions cited by complainant were inapplicable because the domain name was based on the name of one of respondent's products. It further countered that respondent had rights or legitimate interests in the domain name as shown by its U.S. trademark application for VENACURA, which predated notice of the complaint, and that publication of the application was presumptive evidence that the U.S. Trademark Office found no likelihood of confusion with complainant's registered mark, VENACURE. Lastly, the response countered that there was no registration or use in bad faith as shown by the “rights and legitimate interests” evidence (i.e., the trademark application predating the UDRP complaint) and also because respondent and complainant were not competitors.

The sole panelist denied the complaint based largely on the evidence submitted by respondent, which showed that respondent had “used its product in commerce, established a website under the product's name, and applied for a United States trademark under that name well before commencement of th[e] proceeding.” AngioDynamics, D2007-0307 at 4. Respondent met the criteria of one of the three “safe harbors” delineated in the UDRP, which demonstrated rights and legitimate interests in the domain name. Id., referencing Policy para. 4(c)(i). Additionally, the panelist found no “intentional effort to appropriate the goodwill of complainant's pre-existing product.” Id. Rather, the evidence showed that the numerous vein-related products using the “VENA” prefix, the differences between the two Web sites, the differences between the products, and the differences in the intended consumers were enough to rebut the assertion of bad faith use, and that complainant failed to prove that respondent registered the domain name in bad faith.

Lessons Learned

Unlike a court action, UDRP actions are decided solely on the papers submitted and there is generally no opportunity to supplement your complaint or response. Thus, persuasive evidence is crucial to your response. Mere assertions are not sufficient in and of themselves, but must be backed by evidence. As the panelist pointed out in the AngioDynamics decision, the complainant did not supply much evidence to support its assertion that “VENACURE is a well-known mark,” while respondent provided ample evidence of numerous vein-related products using the “VENA” prefix, casting doubt on complainant's assertion. More importantly, by providing evidence of respondent's preparatory activities with regards to selling its product (i.e., use of the product in commerce, establishment of the Web site using the product name, and filing a trademark application for the product name), the panelist found that respondent met the criteria outlined in the UDRP's first safe harbour provision and thus had a genuine defense to the allegation of no rights or legitimate interests. For all practical purposes, this also overcame complainant's registered-and-used-in-bad-faith argument.

Another dissimilarity to litigation is that there is no discovery period. To mount a defense, you must look to evidence available publicly and from your client. Since the panel will work its way through each of the elements, successively, focus on the three elements, and gather anything that will bolster your arguments to disprove each one. Evidence that serves to defeat one element may also serve to defeat another, but if you defeat any one of the three elements, the Panel need not consider the others. See, e.g., Telstra Corporation Limited v. Mandino Pty Ltd, DAU2006-0006 (WIPO Jul. 28, 2006). In general, the panel will only decide the dispute based on the record before it. However, in some instances, a panel may visit a respondent's Web site or conduct limited public record research to assist with reaching a decision. See, e.g., Soci't' des Produits Nestl' SA v. Telmex Management Services, D2002-0070 (WIPO Apr. 2, 2002).

Although not successfully argued in the AngioDynamics case, highlighting the differences between the disputed domain name and the asserted trademark is the first line of defense. The panel will do a side'by-side comparison of the domain name and the trademark, so differentiate the domain name from the trademark in any way possible ' the differing number of letters, use of any distinguishing punctuation, the order of the letters, the meaning of words or portions of words that make up the domain name and the trademark. Use this trademark-type analysis of sight, sound, and meaning to persuade the panel that the domain name is not identical or confusingly similar to the trademark.

Facts and supporting evidence of a client's business (including any preparations for conducting its business), its customers, its Web site, and its products and/or services can serve as proof that: 1) it has legitimate rights to the domain name, and 2) that the domain name is not being used in bad faith. Review the UDRP's safe harbour provisions, Id. at paras. 4(c)(i)'(iii), and gather evidence that your circumstances fall within any one of them. For instance, review the dates of registration of the domain name and the dates of any trademark applications or registrations, both state and federal to show rights to the word or phrase comprising the domain name. Look for evidence to help prove common law rights to the domain name, such as the registration to do business. Look for evidence of first use of the domain name, either as a domain name or as a name “corresponding to the domain name,” such as the name of a product or service. The domain name owner should submit an affidavit attesting to this. If the domain name is being used in a non-commercial manner, consider if the site is being used as a complaint or criticism site, or some other non-commercial use.

Compare your client's products or services, as well as the targeted and actual customers, with complainant's, and differentiate them using an analysis similar to that of a trademark likelihood of confusion analysis to show that there is no bad faith use of the domain name. See, e.g., Diageo plc v. John Zuccarini , Individually and t/a Cupcake trol , D2000-0996 (WIPO Oct. 22, 2000), citing AMF Inc. v. Sleekcraft Boats , 599 F.2d 341 (9th Cir. 1979).

While UDRP decisions do not operate on a strict doctrine of precedent, disputes with similar fact patterns are generally treated similarly and panels will look to and rely on prior decisions for their reasoning. Panels will also sometimes defer to the reasoning found in court decisions, particularly decisions interpreting provisions of the Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. '1125). See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000). However, just as the courts do not always agree, there is not always uniformity among UDRP decisions either.

Conclusion

Statistically, the odds of successfully defending against a UDRP complaint are not favorable. However, as you prepare your response, keep in mind that in order to prevail, a complainant has to prove all three elements of the UDRP to win. As a respondent, you only have to disprove one.

Alyson B. Danowski is an associate at Kelley Drye & Warren LLP, where she is a member of the litigation and intellectual property practice groups. Danowski can be reached at [email protected].