Not Famous Enough To Overcome Monkey Business

Steve Levy ⬥ February 3

As those familiar with the new gTLD rollout know, the Uniform Rapid Suspension (URS) system was created as a less expensive and faster road to trademark enforcement than the longstanding Uniform Dispute Resolution Policy (UDRP).  However, in a recent UDRP decision we were reminded that the UDRP itself was designed to be a less expensive and faster alternative to full-blown court litigation.

In this dispute the owner of the trademark RIMMEL for toiletries, cosmetics, soap, and perfumes claimed that the domain <> was an infringement of its rights to the brand. The domain was created in 1997 and was used briefly in 2005 for pay-per-click links to beauty-related products but, for most of its life, it resolved to a blank page or a Google search bar. The Panelist first addressed the passage of 16 years without any enforcement action by the brand owner but eventually dismissed the Respondent’s claim of laches (delay) following the majority view that under the express terms of the UDRP, the passage of time, without more, does not make out a defense under this doctrine.  However, this doesn’t mean the passage of time is completely irrelevant when considering the three elements that must be proven in any UDRP case.

When the Panelist got to the third of those elements – the question of the Respondent’s bad faith in registering the domain – he decided the trademark just wasn’t sufficiently famous that he could conclude that anyone registering the <> domain name in 1997 did so with knowledge of the Complainant’s brand.  Besides, he concluded, if the Respondent had intended to monetize whatever goodwill exists in the mark it likely would have done so already. Failure to spring the trap after a 16 year hibernation suggests that it might not have been a trap in the first place.

Finally, despite mentioning Complainant’s suspicions that the Respondent was hiding behind a false name and was really a well-known cybersquatter, and after characterizing some of the Respondent’s own conduct and evidence in the case as “monkey business,” the Panelist pointed out that UDRP is not appropriate for all domain name disputes. He commended the Complainant on having done a thorough job in researching and submitting its evidence but said, that with no witness cross-examination or document discovery permitted by the UDRP, the Policy requires the Panel to act on the evidence presented – not on mere suspicion or suggestion.

In a dispute with cloudy facts and evidence like this one, the courts would provide a better venue since they would enable the Complainant to probe further into the true facts surrounding the disputed domain and its owner. It will be interesting to follow this story and see if the brand owner will take this step and put the facts of this case to the test. However, after taking 16 years to pursue the domain name, we may be waiting quite a while before the Complainant pursues this monkey again.

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