For many trademark owners, filing complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) or other policies is like a game of whack-a-mole where it seems as if every victory against one cybersquatter is followed by another problem with another cybersquatter. And sometimes those new problems come from the same cybersquatter, perhaps even while a dispute is still in process.
Fortunately for trademark owners, under the right circumstances, it’s possible to add a domain name to an ongoing case. And although doing so won’t eliminate the whack-a-mole issue, it will at least make a domain name dispute case even more effective by avoiding the need to incur the additional time and expense of filing yet another complaint.
That’s exactly what happened in the case I discuss in a new video, which was filed by an Italian company in the energy market known as Enel. The original complaint included only the domain name <enel-greenpower.com> but Enel asked to add a second domain name, <enel-greenpower.org>, to the UDRP case after it was filed.
(Notably, the second domain name was not even registered until after the complaint was filed.)
As I explain in the video, it appears as if the WIPO case manager probably deferred to the panelist who was appointed later. Once that happened, the panelist issued a procedural order to the respondent or domain name registrant, giving it seven days to communicate whether it intended to make what it called a further response regarding the second domain name – although the respondent had not submitted a response on the original domain name in the first place. The procedural order also spelled out what additional steps the panelist would take if the respondent replied, but it appears as if the respondent did not do so, which is not surprising given that most cybersquatters never bother to file a response.
As a result, here’s what happened:
The panel cited section 4.12 of the WIPO Overview, which addresses the very issue of requests to add domain names to a UDRP case already in process. Among other things, the Overview says:
[P]anels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition).
However, the panel here concluded that it would be appropriate to add the second domain name to the case. Specifically, the panel wrote:
[F]ollowing the issuance of the… Panel Order, noting that the Respondent is the same for both Domain Names, the Panel considered it to be fair and practical, and not prejudicial to the Respondent for the Additional Domain Name, <enel-greenpower.org>, to be considered as part of this proceeding.
The decision also says
The Panel moreover notes that the registration of the Additional Domain Name after notice of this proceeding shows a clear attempt to add time and costs and generally to frustrate the efficiency of the present proceedings; this is textbook bad faith.
The bottom line is that although it’s unusual, when a trademark owner can identify one or more domain names held by the same registrant against whom it has already filed a UDRP complaint, it’s possible to add the additional domain names to the proceeding. If the panelist allows it, doing so will save time and money and also even strengthen the case.
