Steve Levy ⬥ 9 December
Simply put, not all domains are good candidates for a UDRP complaint. It is the duty of a Complainant and its counsel to both carefully research claims before filing and also to be prepared to alter their strategy if new facts come to light after filing. If these fundamentals are ignored and a Complainant is unable to provide the right evidence, it risks more than just a denial of its claim. Completely unsubstantiated complaints could be judged as an attempt at reverse domain name hijacking, a ruling that could be used against the Complainant in subsequent cases.
The perils of filing a complaint without sufficient evidence were highlighted in a recent UDRP decision handed down by a World Intellectual Property Organization (WIPO) Panelist. In this case, the Complainant, the California Milk Processor Board (the organization behind the Got Milk? advertising campaign) was denied its Complaint against Center Ring Productions, LLC over the domain name GotMilke.com.
Respondent’s owner, a Mr. John Milke, registered the domain in 2010 and argued that it had been chosen purely for its resemblance to his own surname. He also asserted that any similarity to the famous Got Milk? campaign was entirely coincidental. Further, the Respondent stated that the domain had been used exclusively for personal emails and not for commercial gain.
The Complainant introduced no evidence to show that the Respondent was not commonly known by the name Milke and, likewise, was unable to show that the Respondent’s choice of the GotMilke.com domain was an attempt to profit from the Got Milk? mark. It seems that the Complainant found it unbelievable that GotMilke.com could have been registered without a desire to profit from the famous ad campaign. Yet this, in and of itself, does not constitute proof and the UDRP Panelist remained unconvinced.
It is surprising, in this case, that the Complainant’s counsel either didn’t adequately research the Respondent or, upon learning the surname of the Respondent’s owner, didn’t move to suspend the case and initiate settlement negotiations. Once the Respondent’s connection to GotMilke.com was discovered, the Complainant would have been better off avoiding the UDRP route altogether and directly negotiating an acquisition of the GotMilke.com domain, or waiting to file the Complaint until able to make its case. Instead, the case was lost and the Complainant narrowly avoided a finding of reverse domain name hijacking.