Inexperienced counsel can flub your case.
The Uniform Domain Name Dispute Resolution Policy (UDRP) can be a good thing. Every week, brand owners use the service to recover domain names that are clear cases of cybersquatting.
I review UDRP decisions almost daily, and one pattern emerges when an outcome is a bit surprising in favor of the domain owner: the complainant didn’t use an attorney who is deeply familiar with UDRP.
UDRP might seem easy, but attorneys that aren’t familiar with previous cases and precedent are at a disadvantage. Hiring your corporate attorney to file a UDRP probably isn’t a good idea unless they have previous experience with UDRP.
Two cases this week are prime examples. The cases fell flat because the complainants failed to provide evidence of their asserted common law trademark rights in the name. To be clear, they might have had other fatal flaws. But these were never examined because the complainants and/or their lawyers failed to provide evidence to back up their claims of common law trademarks.
Consider the case filed by Netsertive, Inc against netsertivesucks.com. It’s possible that this case would have been denied on free speech grounds, but it never got there.
The domain was registered before Netsertive got registered rights in the name. It’s obvious that the domain owner knew of Netsertive and that’s why the domain was registered. It’s highly likely Netsertive had common law rights in its brand prior to the domain registration date. But the company didn’t provide any evidence:
Complainant attempts to rescue its position on the point of Respondent’s registration of the domain name in bad faith by asserting that Complainant acquired common law rights to the NETSERTIVE mark dating from April of 2010, a time prior to Respondent’s registration of the
domain name. However, the Complaint offers no evidentiary support for this proposition. And an assertion of common law rights in a mark that lacks evidentiary support fails to show a subsequent registration of a domain name in bad faith under Policy ¶ 4(a)(iii)
The other case is Jireh Industries Ltd for Jireh.com. In this case, the complainant has pending trademark applications for Jireh. It probably has common law rights but it failed to provide evidence:
Complainant has failed to provide any evidence of the kind that would satisfy its burden of proving common law rights. Complainant’s evidence is limited merely to the statements that it has been using its JIREH mark initially on food processing equipment and later on oilfield equipment since 1983 and on nondestructive testing equipment for industrial applications since 2002. Such assertions alone, without facts to support a claim of common law rights, are insufficient to satify [sic] the requirements of the Policy.
I’ve learned over the years that you need to hire a specialist when it comes to law. You end up getting better results and it’s also usually less expensive since you don’t pay the lawyer to learn the system.