Split UDRP Decisions on (Almost) Identical Domain Names

By Doug Isenberg
Doug Isenberg

Fact: A company called Rocketgate PR LLC, which owns a U.S. registration for the trademark ROCKETPAY, filed two UDRP complaints on the same date against two different domain name registrants — for the domain names <rocketpay.com> and <rocketpays.com>. (The only difference is that the latter domain name is plural.) In both cases, the disputed domain names were associated with inactive websites. The UDRP cases were assigned to two different panelists, who issued their decisions one day apart.

Surprise: Rocketgate won one of the UDRP cases and lost the other one. And, no, the singular v. plural domain names had nothing to do with the different outcomes.

While critics are quick to blame UDRP panelists for inconsistent decisions, the Rocketgate cases are easily distinguishable. And, they provide a good reminder about a fundamental requirement of the UDRP as well as the need to submit complaints that are well-argued (at least, where the facts make such arguments appropriate).

So, why did Rocketgate receive a split decision in these cases? The answer, actually, is very simple.

Registration Dates Matter

In both cases, the panels found that Rocketgate prevailed on the first of the three UDRP elements, that is, that the disputed domain names were identical or confusingly similar to a trademark in which Rocketgate held rights. As the panel in the <rocketpays.com> decision wrote, the additional letter "s" (which does not appear in the ROCKETPAY trademark owned by Rocketgate) was irrelevant, noting that "such a minor spelling alteration" cannot "negate a finding of confusing similarity which is otherwise present as it is in this case."

However, in the <rocketpay.com> case, which Rocketgate lost, the panel found that Rocketgate failed on the second element of the UDRP, which requires a complainant to establish that the respondent has "no rights or legitimate interests in respect of the domain name" — because the domain name was registered in 2002, more than 12 years before Rocketgate began using the ROCKETPAY trademark.

Indeed, as the <rocketpay.com> decision reports, the respondent argued that "unless he was a 'psychic', he could not have registered a domain name to tarnish a trademark filed 12 years later."

This is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which addresses the question of whether a domain name registrant acts in bad faith (the third UDRP element) if it registers a disputed domain name before the complainant's trademark rights arose:

Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

In the other Rockegate UDRP decision (for <rocketpays.com>, which Rocketgate won), the domain name was registered much more recently — eight days after Rocketgate established trademark rights in the ROCKETPAY trademark, according to the decision. In that case, the panel found the timing of the domain name registration significant and indicative of "opportunistic bad faith." The panel said, "it can scarcely be a coincidence that Complainant began using the ROCKETPAY mark on October 1, 2014 and Respondent registered the domain name on October 9, 2014."

Two Important Lessons

The Rocketgate decisions provide important lessons about domain name disputes under the UDRP.

First, the facts of every case are always important. Just because a domain name is identical to a trademark does not mean that the trademark owner will prevail. As the Rocketgate decisions make clear, this is only one of three equally significant tests under the UDRP, and the trademark owner must win on all three elements to win the dispute.

Second, both of the Rocketgate decisions provide important reminders that every UDRP case must be supported by appropriate facts and legal arguments. Even in the case that Rocketgate won, the panel criticized Rocketgate for its weak complaint, at one point noting that "Complainant has not provided evidence of this allegation" and at another point admonishing Rocketgate that "parties and their advisers are reminded that they should adduce evidence of all allegations made."

Perhaps the real surprise in this pair of cases is not that Rockegate lost one of them, but that Rocketgate won one of them. The split decisions should encourage trademark owners to pick their cases carefully — and then argue and support them forcefully.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm. Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

Related topics: Domain Management, Domain Names, UDRP

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