It’s been a while since I last submitted a post about poorly-conceived complaints and this one just caught my eye so here we go. At just about every opportunity (speaking, webinars, blogs, etc.) I offer the advice that brand owners should only retain a domain name lawyer experienced in this rather niche area of UDRP practice to file complaints. Of course, that implies that counsel should be hired and that brand owners should not seek to file complaints on their own. While some complaints of this nature succeed, many more do not and the UDRP is no place for pro se experimentation.
Unfortunately, the owner of a U.S. registration for the TRUERATINGS trademark has not yet received this message and he decided to save some money by crafting his own UDRP complaint against the domain name truerating.com. His trademark registration was filed in 2011 and claims a rather long list of services involving a website on which shoppers can earn redeemable points in exchange for posting business reviews; the provision of attorney and physician referrals; and a website where employees can post reviews of their companies, among others. The disputed domain name, which is owned by a woman in the UK, relates to a system whereby users can provide a 1-10 numerical rating of a businesses they patronize at the point of sale for that business. She didn’t file a response to the complaint.
Going It On Your Own
The first sign of trouble here is the fact that the Complainant did not attach any evidence in support of its complaint. None. Ask any law student on their first day of Evidence 101 (or even someone who watches TV shows with courtroom scenes) and they’ll tell you that most factual assertions must be backed up by some sort of proof. There’s a long line of UDRP cases that hold that conclusory statements of fact are not to be given much weight without some evidence of their accuracy.
If you claim ownership of a trademark registration you need to submit a copy of the certificate. If you claim that a domain resolves to an infringing website submit a screenshot of that website. You can’t count on a Panelist doing your homework for you and looking all of this up for themselves (although the Panelist in this case did actually forgive some of these flaws and found the Complainant’s trademark and the Respondent’s website online).
Next, the Complainant shoots himself in the foot by trying to make a point in his favor, but actually ends up supporting the Respondent’s case instead. Much to my surprise, he states that “[t]he Respondent has a legitimate business called ‘ ruRatings’ which she is commonly known by and which is promoted at <truratings.com>. The name of the Respondent’s business is similar to the Trade Mark. However, as it is not identical, the Respondent is using the Trade Mark to misleadingly redirect users to the Respondent’s business.” An attorney with experience in this field would know that such a statement conceding that a respondent has a legitimate business and is known by the disputed domain fits squarely within the wording of UDRP Par. 4(c) and amounts to throwing in the towel on the question of that respondent’s rights or legitimate interest in the domain – a required element for relief under this policy. Of course, the Panel cited this statement and decided to deny the complaint on these grounds.
Although not mentioned in the decision, it is somewhat curious that the Complainant didn’t mention anything about his business other than the fact that he owns a US trademark registration. In a quick online search, I wasn’t able to find any website, social media account, or even a news story about the Complainant’s business – although I did find other online review services calling themselves “True Rating” or some variation thereof. This leads me to wonder whether there may have been some failed attempt made by the Complainant to purchase the Respondent’s domain, which lead him to file this Complaint for negotiating leverage or as a last-ditch effort to obtain the domain. The fact that the disputed domain was registered a number of years after the claimed start of Complainant’s business might support this, since the Complainant obviously didn’t grab the domain himself when it was available for just a few dollars at a discount registrar.
The Benefits of a Domain Name Lawyer
So, the takeaways from this story are:
- register or buy a domain for your business before you invest and tie yourself to a particular brand;
- if you need to use the UDRP support your claims with documentary proof; and
- hire experienced counsel to draft and file the complaint for you (or at least review the matter and tell you if your case is weak).
The investment in properly using the UDRP will pay off exponentially in the money you’ll save by having to either rename your business or try to strike a purchase deal with a winning respondent.
- How Fast Flux DNS is Hurting Brands and How It Could Affect UDRP - October 19, 2017
- Is Nominative Fair Use of Domain Names OK For a Business That Is Related to a Brand? - May 15, 2017
- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017