Today Complainant Coty Deutschland GmbH of Mainz, Germany, represented by Boult Wade Tennant, United Kingdom have failed to secure the domain name RIMMEL.COM after Panellist Richard G. Lyon was not persuaded of their bad faith argument and reliance on a UDRP decision which is said to be the top most cited case in UDRP history.
Prior to making its decision the Panel extensively assessed the obscure circumstances surrounding the identity of the Respondent.
The Center noted that shortly after the filing of the Complaint the public Whois database indicated “Mr. Tom Marks” as the Respondent, and the Response was submitted on behalf of “Mr. Marks”. The Complainant in its December 30, 2013, email to the Center questioned the very existence of “Mr. Marks” and requested the Panel to exercise its prerogative under paragraph 12 of the Rules to “request documents confirming both the identity of Mr. Marks and his standing to make submissions in this case.”
The Complainant also stated that it “[has] reason to believe” that the “true owner” of the disputed domain name was a Peter Colman based on a previous dispute back in 2002 whereby Peter Colman was also allegedly said to have been the registrant on record for the rimmel.com domain name.
A whois history search conducted today reveals that Mr Peter Colman was in fact the Registrant of the domain name back in 2004. What was less clear in this case is the Complainant’s connection between Peter Colman and the Respondent in the current proceedings.
The Panel issued a procedural order requesting the Respondent to provide clarification on his connection with Mr Colman to which he replied:
“I can confirm that I have at no time had any business relationship either formal or informal, oral or in writing with Mr. Peter Colman.”
This surely would have thrown a spanner in the works as this was clearly a case of Complainant’s word against the Respondents; without sufficient evidence to raise more than a possibility of a connection the Panel is not in a position to make a positive determination.
The Panel held: “A preponderance of the evidence is necessary for concluding otherwise, and that does not exist.”
It should be remembered that Complainant has the burden of proof and a burden of proof is essentially that, the responsibility to produce legally sufficient evidence to sustain his burden. The Complainant who files a UDRP complaint is in effect asking a Panel to make a decision in its favour to take away property from someone who may have held it for many years without opposition. Mere supposition is not proof of anything and therefore in this case the Panel were [rightly] not willing to treat Peter Colman as the Respondent.
Although the Respondent failed to show that it had any right or legitimate interest in the domain name the burden was still on the Complainant to prove [on the balance of probabilities] that the Respondent registered and used the domain name in bad faith.
Complainant’s strongest argument for a finding of bad faith relied upon the early and most popular cited decision in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Tesltra decision famously set out a list of requirements that demonstrated evidence of bad faith use in circumstances where domains were being passively held; these were circumstances where;
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
It would seem however that in the present case not all of the above circumstances were present.
For one, there was still obscurity surrounding the true identity of the Respondent which had not be sufficiently proven by the Complainant (Factor ii).
And Factors (ii) and (v) did not precisely match the Telstra facts, as the Respondent stated, with some (albeit thin) evidence, that the disputed domain name was acquired, with many others, to establish a surname-based email service, a use that might be deemed legitimate.
The Panel also highlighted the determinative differences between the present case and Telstra which included The Respondent and Panel both residing in Australia where the brand was well known and the passage of 16 years in the present case which had been allowed to pass before bringing the dispute. It must be noted that while there have been a few recent cases urging the adoption of a laches defense (delay in bringing a claim) in a Policy proceeding, no such defense is expressly or impliedly included in the Policy or the Rules, however as the WIPO Overview 2.0 continues: “a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith.”
For the reasons above and for the reason that the Complainant failed to support it charges the claim was DENIED, although it would appear that the panel seems to have been reluctant to make such a determination; the panel continued;
“the Complainant has done a thorough and commendable job of scouring the public record for proof. With no power to compel testimonial or documentary evidence and under a Policy and Rules that in the interest of an expedited procedure for a limited class of disputes severely limit the ability of parties and the Panel to investigate, however, this Panel believes that anything beyond what was requested in Procedural Order No. 1 would exceed his limited brief under the Policy.”
This case does much to expose the limitations of the UDRP.