The WIPO Panel passed down a decision which offers further hope for legitimate domain investors (or ‘Domainers’ as they are commonly known).
The dispute involved the domain name <ilusion.com> which was registered to Web Development Group, an entity which had been found to have previously been involved in UDRP disputes.
Complainant, who uses the “ILUSION” registered mark to provide women’s apparel in Mexico, relied on the argument that Respondent was in the business of domain name speculation and reflecting the names of trademark owners in corresponding domain names.
Arguably, many Panels in the past have come to the conclusion that a history of past decisions against a Respondent is evidence of both bad faith registration AND use. However, counter to this argument UDRP POLICE directed the Panel to the case of eSnipe, Inc. v. Modern Empire Internet, Ltd where the highly esteemed Panel held:
“For completeness, the Panel now addresses the Complainant’s reliance upon the fact that the Respondent appears to have been on the losing side as respondent in a number of previous proceedings under the Policy, although succeeding, it appears, in the only complaint to which it responded. The Panel has not reviewed those decisions, because the allegation under paragraph 4(b)(ii) of the Policy, which calls for a pattern of abusive conduct under the Policy can only succeed if the Panel is satisfied that when registering the Domain Name the Respondent was targeting the Complainant. For the reasons given, the Panel is not so persuaded.”(emphasis added)”
The above helps to reinforce the point that Complainant’s still have a burden to fulfil and that a Respondent’s bad faith in previous cases does not necessarily mean that the present case automatically falls within the same category.
The Panel in the present case agreed with this reasoning, stating:
“The fact that Respondent may have engaged in a pattern as to other trademark owners does not establish that it did so here.”
Complainants should never forget the evidentiary burden imposed on them, even before the Respondent has a case to answer. If they are unable to show evidence of Respondent’s intent to take advantage of the concerned mark at the time of registration then the prerequisite bad faith element cannot be proven, irrespective of the Respondent’s prior behaviour.
Unfortunately for the Complainant in this case the UDRP offers no three-strike policy and therefore each case must be based on its own merits.