A number of times, in the course of my practice, domain owners have changed website content in response to a demand letter or a UDRP complaint. These changes sometimes involve removing mention of the complaining brand owner’s products, putting up content that attempts to play on any dictionary meaning of the domain name, or deleting the website completely. So, what impact do these changes have on trademark disputes?
In some situations, the changes may be found acceptable to the brand owner if the domain is not critical to its business strategy in the first place and if money has not yet been spent preparing a UDRP complaint. I have seen a few cases where the brand owner just decided the case was not worth pursuing and simply decided to monitor the website for any return of its infringing content.
But, in situations where the domain is worth pursuing, either for active business use or as a defensive asset, these website changes are not looked upon with any sympathy. The thinking is that the registrant only made the change because it “got caught” and is trying to squirm out of losing the domain through an enforcement action.
I Don’t Think That Domain Means What You Think It Means
This was the situation in a recent UDRP complaint case involving the domain tüpraş.com. The Complainant, owner of the TÜPRAŞ trademark, is Turkey’s largest petroleum company, and the disputed domain name resolved to a parking page where the name was offered for sale.
However, when the Panel visited the website, after delivery of the Complaint to the Respondent, it found that the website content had been changed and the offer for sale was removed and a new heading appeared “TÜRKİYE ÜRÜN PAZARLAMA REKLAM ARGE ŞİRKETLERİ” (in English: “Turkey Products Advertising Marketing Companies R&D”), which implied that the disputed domain name was an abbreviation thereof.
The Panel found that this heading did not refer to a legally-existing business that would have given the Respondent rights to the term TÜPRAŞ. This post hoc change to the website was presumably done only to try and defeat the UDRP complaint.
Now You See It, No You Don’t: Disappearing Website Content
In another UDRP complaint case, the disputed domain names <jimmy–choo.org> and <jimmychooutletsale.org> resolved to websites offering women’s footwear for sale, including those of the Complainant’s competitors. After the complaint was filed, the website content was removed.
Nevertheless, the Panel found that, “in these circumstances, the mere alteration, or change in character, of website content does nothing to change the Respondent’s bad faith registration and use of the disputed domain names.”
Timing is Everything in UDRP Complaints
Many other examples of this type of behavior can be found, but what these cases tell us is that bad faith use of a domain name, as set out in par. 4(a)(iii) of the UDRP, is to be considered before the domain owner is put on notice of a dispute by the complaining brand owner.
Such use is considered to reflect the owner’s true intentions for use of the domain and most changes made after being put on notice are presumed to have been done only in an attempt at frustrating the enforcement process. Although I have not personally encountered a situation where a website change was made out of a sincere desire to reflect the innocent, good faith use originally intended by the domain owner, I will accept that such a scenario is possible.
What all of this means, from a practical standpoint, is that expert collection and retention of evidence must be made as soon as possible after a brand owner learns of a potentially infringing domain name and, in any event, before a demand letter or UDRP complaint are sent to the domain’s owner.
Given the very limited scope of evidence permitted under the UDRP process it would reflect especially poorly on a complainant’s position if it wasn’t able to show images of the accused website as it existed prior to being changed by a respondent. Of course, website archives exist but I prefer to treat these as a backup plan as they don’t always have the needed screenshots from the pre-dispute time period.
To head off such website content-related issues, brand owners are advised to consult with an expert in domain name cases before taking any steps, such as reaching out to the domain owner, which might lessen your chances of success in a possible UDRP case.
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