I've said many times that winning a domain name dispute under the URS is much more challenging than under the UDRP. But, that doesn't mean trademark owners should take the UDRP for granted.
One complainant learned that lesson an especially hard way – first by losing a URS determination and then by losing a UDRP decision on the same domain name.
The complainant, Bloomberg Finance, is the owner of the well-known Bloomberg trademark and has significant experience in filing (and even winning) both UDRP and URS cases (about 170 of them) through the years. Many of the cases involve variations of its Bloomberg trademark, and, increasingly, the company has filed complaints involving new top-level domain names, such as bloombergfinancial.market, bloombergnews.press and bloomberg.store.
But Bloomberg lost a URS determination for bloomberg.site on March 15, 2017, and then a UDRP decision for bloomberg.site on June 8, 2017.
To be clear, there's nothing wrong with filing a UDRP complaint after filing a URS complaint on the same domain name. Indeed, the URS states that a "URS Determination shall not preclude any other remedies available to the appellant, such as UDRP (if appellant is the Complainant)." This rule makes it possible, as I've written before, for a trademark owner to use the URS as a sort of preliminary injunction, getting a domain name suspended quickly and then later transferred under the UDRP.
Unfortunately for Bloomberg, however, neither the URS nor the UDRP was helpful for the domain name bloomberg.site. A review of the decisions raises questions about whether the domain name was really appropriate for a legal dispute and, if so, whether Bloomberg made its strongest possible arguments.
What the URS and UDRP Decisions Said
First, in the URS determination, the examiner wrote that Bloomberg's complaint was "devoid of any allegations or proof of facts tending to show, even prima facie, either that Respondent has no right to or legitimate interest in the <bloomberg.site> domain name, or that the domain name was registered and is being used by Respondent in bad faith." As a result, the examiner refused to suspend the domain name.
Undeterred, Bloomberg then filed a UDRP complaint for the same domain, apparently hoping that the UDRP's lower burden of proof (and perhaps the UDRP's more generous filing guidelines) would result in a better outcome.
However, the UDRP panel found numerous faults in Bloomberg's case, calling an exhibit in the complaint on trademark rights "poorly presented" and containing "inadequate proof of registered trademark rights."
But Bloomberg's fatal mistake was on the UDRP's "bad faith" element. Apparently, Bloomberg failed to learn any lessons from its URS loss, because the UDRP panel wrote that "an inference of likely bad faith use could here only rest on supposition." Although UDRP case files are not publicly available, this language from the decision would indicate that Bloomberg failed to present factual evidence or legal arguments as to why the panel should have found bad faith – and, the panel appropriately saw no need to go out of its way to make the complainant' arguments for it, noting that Bloomberg "is a common family name which might remain open to use in good faith by any number of traders."
The UDRP panel concluded with some harsh words for Bloomberg:
...Complainant, having failed with its URS complaint, took nothing from the experience and again did not present argument concerning bad faith use in these proceedings. The Panel finds that Complainant has not met even the lower burden of proof of bad faith use under the UDRP.
Lessons for Trademark Owners
The bloomberg.site cases hold some very important lessons for trademark owners in domain name disputes. Among them:
- Not every domain name is appropriate for a URS or UDRP case, especially if the domain name contains a trademark that has multiple other uses and there is no evidence that the domain name was registered or is being used in bad faith.
- The URS contains a high burden of proof – "clear and convincing evidence" – and is only suitable for "clear cases of trademark abuse." Therefore, complicated cases or those that require extensive factual evidence or legal arguments are not appropriate for the URS.
- Don't take anything for granted in a UDRP case. I often tell my clients that a UDRP complaint is more similar to a motion for summary judgment in litigation rather than an actual complaint and, therefore, should contain all relevant facts and detailed legal arguments with citations to convince the panel.
