Consolidating multiple domain names into a single complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) can be an incredibly efficient way for a trademark owner to tackle cybersquatters — but this practice is not always the right choice and needs to be taken seriously.
In a video on the GigaLaw YouTube channel, Doug Isenberg discusses why a UDRP panel at the World Intellectual Property Organization (WIPO) rejected a trademark owner's attempt to include 14 domain names in one complaint, forcing the trademark owner to expend additional time and money filing multiple complaints.
As Doug discussed in Episode Number 9 of his Masterclass on Domain Name Disputes, the UDRP specifically contemplates cases involving multiple domain names. In fact, the UDRP Rules say that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
The key for a trademark owner is to establish that multiple domain names are in fact held by a single registrant — an issue that has become increasingly complicated in recent years given the popularity of privacy and proxy services, the European Union’s General Data Protection Regulation (GDPR), and a tendency among cybersquatters simply to provide false contact information when registering domain names.
In a UDRP complaint filed by Fenix International (a frequent filer of domain name disputes, with more than 150 cases at WIPO), the panelist rejected the company’s attempt to include 14 domain names in a single complaint. The panelist noted a number of differences among the domain names and how they were used, which it said indicated that they were not subject to common control.
The panel wrote:
[T]he Panel concludes that there is insufficient evidence to support a finding that common control exists. Given the above reasons, the Panel rejects the Complainant’s request to have the Complaint filed against multiple Respondents. Accordingly, the Panel will give no further consideration to the disputed domain names within this proceeding and the Complainant may file new UDRP proceedings, should it wish to do so, in respect of these disputed domain names.
Since this decision was issued, Fenix has followed up with at least five new and separate complaints for five of the domain names in the original case. Interestingly, it won four of those disputes and lost one because it failed to establish that the domain name was identical or confusingly similar to its trademark. It’s unclear why Fenix hasn’t filed separate complaints for all 14 of the original domain names.
In any event, the lesson for trademark owners here is that it’s important to make a strong and well-documented case for consolidation when including multiple domain names in a single complaint. While consolidation is attractive, failing to make the case could lead to additional expenses and delays that could have been avoided by filing multiple complaints from the beginning.
Learn more in the video below:
