Mere Holding of Domain Name Does Not Provide Trademark Rights (1.Viewing)

Case Comment by Zak Muscovitch: Any lawyer reasonably familiar with the UDRP would have easily appreciated that the Complainant had no genuine case to bring. Yet it was brought anyhow and the Panel rightly found RDNH. Blackadders, the firm which brought the UDRP proceeding does not appear in UDRP.tools to have been counsel in any UDRP cases before and its website appears to indicate that it is not an IP firm, but rather focuses on family law, property law, and general dispute resolution. Did Complainant’s counsel nonetheless have an obligation to familiarize itself with the UDRP and the associated case law before commencing the proceeding?

I have written before in the Digest, including in last week’s issue, that more often than not, Complainant counsel is the one that is truly responsible for RDNH given that Complainants are not themselves likely to be familiar with the UDRP and the associated case law regarding RDNH, but rather rely upon counsel. In this particular case, it may be that Complainant’s counsel could be faulted for not familiarizing itself with the UDRP before commencing a proceeding, which is in contrast to a situation where counsel clearly knew better yet proceeding headlong anyhow. In either case though, there is a basis for a Panel finding fault with not only the Complainant who brought the proceeding, but also with its counsel upon whom the Complainant relied. But what of a circumstance where counsel warns its client that proceeding would be ill-advised and the Complainant insists on proceeding anyhow? Where proceeding would clearly involve bringing an abusive proceeding it would necessarily involve imposing upon counsel to breach a common legal ethic or code of conduct not to do so, and counsel must decline. Moreover, bringing an abusive proceeding would breach the Certification required pursuant to Rule 3(xiii) of the UDRP Rules:

“Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

As you can see, it is nominally the Complainant’s own certification however Rule 15 states that “the signature [can be of] of the Complainant or its authorized representative”. Where counsel signs on behalf of the Complainant in connection with an abusive Complaint, arguably counsel has taken on more responsibility than if the Complainant’s signed itself. On the other hand, regardless of who signs the certification, a Complainant counsel’s ethical responsibility to not bring an abusive proceeding remains.

In last week’s BeautyGarde case, the Panel noted that the RDNH finding was likely the fault of the Complainant’s counsel, though formally declared that it was “the Complaint [which] was brought in bad faith”. This declaration is perfectly consistent with the precise language of Rule 15, which mandates that if a Panel finds that a Complaint was brought in bad faith, “the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding” [emphasis added]. As such, pursuant to Rule 15, such declarations must be made in relation to the Complaint itself. There is no provision for a declaration to be made against the Complainant per se or against the Complainant’s counsel, though of course the Complainant and/or its counsel can be ultimately at fault.

Accordingly, given the language of Rule 15 it appears that the correct approach is to do as the Panel did in the BeautyGarde case by following the letter of Rule 15 by making the declaration that the Complaint itself was brought in bad faith. Nevertheless, as was also done in the BeautyGarde case, it remains open to Panels to additionally lay fault with the responsible party or parties, which may include the Complainant and also its counsel where appropriate.

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There is a great comment on the article above by @Zak