One Strike, and You’re Out
March 10, 2014
By slevy
In many of my past entries you’ve heard me discuss the need to have UDRP complaints filed by counsel who are experienced in this specific area rather than simply relying on your usual litigation counsel. There are many examples of winnable cases that have been lost due to UDRP complaints missing some crucial piece of evidence. In some instances, Panelists have been generous enough to either request additional information from complainants or to at least deny these claims without prejudice, meaning that the brand owner can correct and re-file the case. However, that may all be about to end due to a new trend that appears to be forming amongst UDRP Panels.
In this case, the Robert Kennedy College of Zurich, Switzerland filed a complaint with the World Intellectual Property Organization over the domain name kennedyuniversity.com. Unfortunately, even though the Respondent failed to reply, its complaint was unsuccessful.
The problem, according to the Panel in its discussion and findings, was that the College claimed but failed to provide sufficient evidence that it is the owner of the trademark for ROBERT KENNEDY UNIVERSITY, which the Panel did not find to be interchangeable with the name “Robert Kennedy College”.
While the Panel could have asked the Complainant for a better explanation, the Panel decided not to, citing the recent cases of CAM London Limited and Comgest Asset Management International Limited v. Cam LondonLtd, WIPO Case No. D2013-2190 and 5 PRE VIE W AB v. Diego Manfreda, WIPO Case No. D2013-1946.
What these two cases have in common is that both Panels noted that complainants should “get it right” the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone. Unfortunately, once a UDRP complaint is denied in this manner it cannot be re-filed except under very limited circumstances and the brand owner could then be forced to spend even more of its precious budget on pursuing the domain in court as its only remaining venue for the dispute.
This trend serves as a warning that other potential complainants should take note of. It is not safe to assume that a Panel will always give you a second chance. As the Panel in this case further stated, “To give the Complainant “a second bite at the apple” would not be in line with the spirit of expediency and efficiency suggested in the Policy”.
As our readers know, the UDRP was created to be a low-cost, fast-track alternative to expensive and lengthy litigation. In order to get that benefit, carefully consider who to use for your UDRP counsel and always go with the seasoned veteran (FYI, we’ve filed over 220 complaints). The rule, now officially, is do it right, do it once.
