Delta Dental Goes After … Everyone

Steve Levy ⬥ 30 June

Have you ever visited a dentist who went after every possible cavity with his drill – all in one visit? In this week’s World Intellectual Property Organization (WIPO) decision, Delta Dental appears to have gone after every possible respondent – nine, to be exact – in one complaint.  This type of consolidating can only be done where (i) the disputed domain names are subject to common ownership or control, and (ii) the consolidation would be fair and equitable to all parties.

Delta Dental operates dental and vision offices across the United States and holds federal registered trademarks in the U.S. for Delta Dental. The complainant initially included 30 domain names in the complaint, but one respondent transferred prior to the proceeding. The panelist allowed the consolidation of complainants citing the following:

Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the disputed domain names or the websites to which the disputed domain names resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties…Common control has been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Policy… A unity of interests may be shown to exist where each of the disputed domain names have been used in an identical manner to attract Internet visitors to websites operated by the registrants containing identical materials. Another factor which evidences common control is similarities in the naming convention of the disputed domain names.

I find this rather interesting and a bit on the fringe of what constitutes good evidence of common ownership or control.  Here, many of the domains are with different registrars and the identity of the true owner was hidden under different privacy services.

However, they all resolved to similar pay-per-click (PPC) websites and they all followed a similar pattern of incorporating the brand and state names.  In consolidating the cases the panelist went out on a limb somewhat but it seems to be a rather sturdy tree and – finding that the complainant upheld all three of the requirements (identical or confusingly similar, rights or legitimate interests, registration in bad faith) – ordered the domain names be transferred to the complainant.

I was asked, by a colleague, whether this situation is analogous to a reverse class action and it got me to thinking. The comparison isn’t quite accurate but I thought it’s more like a single “gang of one” in which a single cybersquatter tries to masquerade as different registrants to try and throw the brand owner off the scent when searching out infringements. However, in this case, the ploy failed and the gang turned out to be just a single individual sitting before the glow of his computer screen and finishing off his bag of corn chips.

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