Consolidating multiple domain names into a single dispute can be a very efficient and economical way for a trademark owner to tackle cybersquatters. But consolidation is not appropriate in all cases, including the one I discuss in a new video, in which the panel denied a complaint with respect to four of the 12 disputed domain names because it found that they were held by different registrants.
The UDRP complaint was filed at WIPO by two companies known as Bitrise that are part of a common corporate group founded in 2014. They own at least two trademark registrations for the word BITRISE, one in the European Union and the other in the United States, and they use the domain name <bitrise.io>, which was created in 2014.
The 12 domain names in this UDRP case each included the BITRISE trademark, sometimes alone and sometimes in connection with one or more other words such as “wallet” or “token,” in five different TLDs: .com, .org, .app, .site, and .finance. The domain names were being used in a variety of different manners — and I include screenshots of some of them in my video.
Substantively, the Bitrise case was not complicated, but procedurally it addressed the important issue of consolidation and resulted in an unusual split decision.
The issue relates to one sentence in the UDRP Rules, in paragraph 3(c), which says that a UDRP “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
In cases where the whois records identify the registrant of multiple domain names as the same person or entity, this is a non-issue. But increasingly, cybersquatters use aliases to hide their true identities, so simply comparing registrant names is not always the only examination to be made. As a result, the WIPO Overview says that panels typically examine two factors in deciding whether multiple domain names may be consolidated in a single case:
whether the domain names or corresponding websites are subject to common control, and
whether consolidation would be fair and equitable to all parties
The panel allowed consolidation for eight of the disputed domain names but reached a different conclusion with respect four others. Here’s what the decision says:
It is true that all 12 domain names were registered within a relatively short period of four months and that these other four disputed domain names incorporate the same trademark as the first eight, plus another word in two cases…. However, the available data regarding the [other four] disputed domain names…, including their registration details and the uses to which they are put, indicates that they may well be opportunistic registrations by different persons acting independently of each other…. In these circumstances, the Panel is not satisfied that, on the balance of probabilities, these four domain names are under common control with the first eight.
As a result, the panel went on to issue a decision on the substantive issues of the UDRP’s three-part test for the eight consolidated domain names, which it ordered transferred to the complainant Bitrise, but it denied the complaint with respect to the other four domain names – although the panel did say that its decision was “without prejudice to the possibility of refiling complaints” for those four domain names.
So, what’s the lesson here? Pretty simply, that UDRP panels will not always accept a trademark owner’s request to consolidate multiple domain names in a single proceeding. That’s why I often recommend to my clients that filing multiple complaints, sometimes simultaneously, is the better approach if common control among multiple domain name holders cannot be established.
A link to the UDRP decision is in the description for my video.
