By Steve Levy
Not all domain name disputes need to end up as UDRP complaints. Although it’s become more of a challenge since the adoption of the GDPR – which registrars have used as a reason to hide nearly ALL useful whois contact information – demand letters and other outreach to domain name owners can sometimes lead to voluntary transfers or negotiated settlements, thus avoiding the filing of a formal UDRP case.
This approach was, quite sensibly, tried by the Complainant in a recent case involving the domain name <oris.com>. A Swiss wristwatch maker since 1904, the Complainant has used the ORIS trademark since 1964. The disputed domain name was registered in 1998 and does not resolve to any website. A reseller for the domain name was identified and its contact information matched the postal address in the domain’s whois record, though the email and phone number were different. An email was sent to the address listed for the reseller and a reply was received from someone named Yoshiki Okada. The decision is a bit vague on this point but it seems that Mr. Okada expressed a willingness to transfer the <oris.com> domain name to Oris but was unable to access the account in which the domain was held. A representative for Oris suggested to Mr. Okada that he could try regaining access to the account, or the disputed domain name could be allowed to expire, or Oris could file a UDRP complaint.
Although the panel in this case found that the Complainant had satisfied the first two elements of UDRP par. 4(a) (confusingly similarity between the domain and the trademark, and Respondent’s lack of any rights or legitimate interests in the domain), it declined to find that the <oris.com> domain name was registered and used in bad faith under the third element of par. 4(a). One reason is that no evidence of the Respondent’s intent to target the ORIS trademark was presented by the Complainant, perhaps because the domain name was registered over 25 years ago and so evidence may now be difficult to gather or may be quite stale [lesson: be proactive in pursuing domain name enforcement]. Another reason is that the word “Oris” has its own inherent value, perhaps as a Latin word meaning “mouth” or “face” [lesson: get an expert assessment of your case before filing a UDRP complaint].
However, the centerpiece of the panel’s decision is the Complainant’s emphasis on its contact with the mysterious Mr. Okada whom it believed to be the registrant of the <oris.com> domain name and thus the Respondent in this case. The panel notes that the “Complainant describes this person as ‘the Respondent’ without showing any evidence of the person’s link to the disputed domain name.” Although the postal address for Mr. Okada matched that of the domain name’s whois record, his email address and phone number did not. Further, no response or other statement was filed in the case by the Respondent. This led the panel to find that “there is insufficient evidence showing that this person is the holder of the disputed domain name or has any authority to speak on behalf of the holder of the disputed domain name.” It thus declined to consider the Complainant’s assertion that Mr. Okada expressed a willingness to transfer the <oris.com> domain name. So, the combination of no evidence that the ORIS trademark was targeted and the flawed argument that Mr. Okada is the domain registrant and consented to its transfer ultimately resulted in the panel finding that there was no bad faith registration of the domain name. It declined to even consider the next issue of bad faith use under UDRP par. 4(a)(iii).
In light of the current difficulties of identifying the true owner of a domain name, brand owners are often hard-pressed to establish contact and reach negotiated settlements with domain name registrants. This case highlights that, even when contact is established and a registrant seems willing to transfer a domain name, it’s still critical to either 1) have the registrant transfer the domain name through the appropriate process, 2) confirm that you are, in fact, in contact with the true registrant for the domain name and have them submit a statement that they’re willing to transfer the domain name should a UDRP become necessary for some reason (ex., the registrant claims that they can’t access their domain name account); or 3) carefully assess the strength of a UDRP case in the event that the registrant doesn’t appear and won’t submit a statement consenting to transfer. If 1) or 2) are not possible and you’ve got a weak case after undertaking 3), then another approach may be needed. Perhaps a private investigator case tracks down the true domain name registrant, maybe the case is better suited to a court that can issue a disclosure order to the registrar, or, in a worse-case scenario, maybe decide that it’s just not possible to obtain a transfer of the domain name under the current circumstances and another domain should be chosen.
In any event, getting the advice of an expert with longstanding experience in domain name disputes is often a good up-front investment that case save money and headaches down the road.