By Steve Levy
A recent decision raises two very timely and critical issues. First is whether the case is being decided based on all of the available evidence, including how far a panelist itself is expected to go to find information that has not been submitted by the parties. The second is why there’s such a low response rate in UDRP cases and how this can lead to decisions based on an incomplete factual record.
As background, it’s important to know that bad faith registration (as mentioned in par. 4(a)(iii) of the UDRP) is almost impossible to prove if the disputed domain name was registered at a time before the Complainant’s trademark rights came into existence. After all, you can’t target a non-existent mark in bad faith. Also, when a domain name is sold to someone who has no business relationship with the original owner, this is typically considered to be a new “registration” for purposes of par. 4(a)(iii). So, it’s still possible for an old domain name to be “registered” in bad faith if it’s sold to someone new after the creation of the Complainant’s trademark rights.
In a recent case against the domain name sleeptopia.com the Panel found it “reasonable to infer” that a transfer of the disputed domain name had taken place based on a recent change in the Whois record to a proxy service, and a change in the domain’s website resolution, at around the same time, from a parked GoDaddy page to a pay-per-click page with links competitive to the Complainant. These two signals may, in some cases, indicate a change in domain name ownership but more definitive evidence is often available. I pulled up the archived Whois records and found that the named Respondent, Gregory Perez, has actually owned the domain name since at least August of 2008, a significant number of years before the Complainant’s claimed date of first trademark rights in 2013. So, should the Complainant have provided this evidence when it filed the Complaint? Its required certification, at the end of the Complaint, states that “the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate”. Or should the Panel have exercised its authority, under the UDRP Rules, to conduct its own research and look at the archived Whois records?
This brings up the second issue, and the silent party in this case. Why did the Respondent, Gregory Perez, default and fail to explain that it’s owned the domain since before the existence of the Complainant’s trademark rights? Since it owned the domain name for around 15 years, maybe it failed to update the Whois record to its current email address. Or maybe there’s another problem where the Respondent is deceased or incapacitated, or perhaps the WIPO’s email serving the Complaint got caught in the Respondent’s spam filter or the Respondent thought it was a scam and didn’t open the attachment for fear of malware. In any event, the UDRP ecosystem would likely benefit from better service processes such as a confirmation email from a source that’s known to the Respondent, such as its own Registrar. I’m part of a group that’s proposing exactly that but it’s likely to take a number of years before it gets through the ICANN process for considering such changes. The bottom line is that a lack of evidence here caused a decision to be made based on an inference rather than on the actual facts of the case and this lowers the quality of the UDRP and people’s trust in the process.