Having a strong UDRP complaint is not worth very much if you fail to support your factual arguments appropriately.
That's one harsh lesson from the intriguing dispute around the domain name <thesis.com>, Chris Pearson v. Domain Admin / Automattic, Inc., NAF Claim No. 1613723.
The case was won by the registrant, Automattic, Inc., the company behind the popular WordPress software, which apparently bought the domain name for $100,000 and was allowed to keep it -- despite the UDRP complaint brought by developer Chris Pearson, creator of the "Thesis" WordPress theme.
(For the uninitiated: WordPress is a sophisticated website content management system used by everyone from individual bloggers to leading news sites such as parts of The Wall Street Journal. A WordPress theme is a "skin" or design for a WordPress site that controls the look and presentation of the material on it.)
At first glance, the dispute might not seem so extraordinary, given the fact that "thesis" could be seen as a dictionary or generic word, which, as I've written, often makes for a weak UDRP case. But here, Pearson, the complainant, had a federal trademark registration for the word, and Automattic, the respondent, was apparently (more on that below) using it in a competitive manner by redirecting users to its own website offering a variety of WordPress themes.
The three-member UDRP panel had no trouble finding for Pearson on the first two UDRP elements -- the domain name <thesis.com> was identical or confusingly similar to a trademark in which Pearson had rights, and Automattic had no rights or legitimate interests in respect of the domain name.
However, the third element -- whether Automattic registered and used the <thesis.com> domain name in bad faith -- proved problematic.
When I visited www.thesis.com, I indeed found that it redirected to a website at themeshaper.com, which said: "This is ThemeShaper; a WordPress-powered blog and home to the Automattic Theme Division. We shape beautiful and customizable themes that make the world a better place."
Quite often, UDRP panels find that using someone else's trademark in a domain name in connection with a website that offers competing goods or services is clearly bad faith.
According to Pearson's version of the story -- and he tells a very interesting, and lengthy, story, which includes some nasty history with Automattic -- he passed on an opportunity to buy the <thesis.com> domain name long after he had created his Thesis theme, losing it in a bidding war to Automattic. But Pearson reasoned that "[b]ecause of my trademark, there was no way [Automattic] could legally use the domain for" its WordPress business. When he later saw that is was being redirected to Automattic's theme site (a site that presumably competes with Pearson's own site for his Thesis theme), he said, "I felt Automattic had purchased the domain in a specific attempt not only to prevent me from getting it, but also to, for lack of a better term, show me who is boss."
So, Pearson filed a UDRP complaint -- which, according to Pearson, led to some interesting negotiations and a settlement agreement ready for execution when the UDRP decision was issued.
And, the decision included this fatal (to Pearson) reminder:
Complainant claims that Respondent’s use of the disputed <thesis.com> domain name is to divert and confuse customers and potential customers. The Panel notes that Complainant did not include an exhibit showing that <thesis.com> redirects to a webpage owned by Respondent. The Panel suggests that the submissions might point toward use by Respondent that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect. However, Complainant failed to bring that proof to the Panel.
(Emphasis added.)
In other words, the panel might have found bad faith if Pearson's UDRP complaint made clear that Automattic was in fact using it in connection with a website for WordPress themes. But, as in all UDRP proceedings, the burden of proof is always on the complainant.
As WIPO's helpful "Overview" makes clear, "an asserting party would typically need to establish that it is more likely than not that the claimed fact is true" and "[c]onclusory statements unsupported by evidence" are insufficient.
(Interestingly, the panel's decision in the <thesis.com> case seems to state that Automattic agreed about the domain name redirection, but because UDRP filings are not publicly available, it's unclear exactly what Automattic may -- or may not -- have admitted.)
As a result, the panel said that Pearson's "mere assertions of bad faith are insufficient," and it allowed Automattic to keep the domain name.
Admittedly, how to show in a UDRP filing that one domain name redirects to another is a challenging task. While I don't know what evidence, if any, Pearson included in the complaint, he could have used something as simple as a written declaration to describe the redirect or as sophisticated as a screencast to document it.
Regardless, the bottom line is clear: Don't rely on naked allegations of essential facts that are unsupported by appropriate evidence. Instead, document vital facts with relevant "annexes" that are explicitly contemplated by the UDRP Rules and regularly a part of even the most straightforward UDRP disputes. Doing so could make all the difference.
