A recently issued decision by the National Arbitration Forum reinforces the importance of ensuring UDRP complaints are fundamentally sound. In PrintingForLess.com, Inc. v. Intech Printing, FA366693 (Nat. Arb. Forum May 7, 2011), complainant PrintingForLess.com, Inc. filed an action against respondent Intech Printing for the transfer of the domain name bestprintingforless.com, and Intech Printing failed to respond. Both parties were engaged in online commercial printing services and located in the United States.
Facts of the Case
Complainant PrintingForLess.com began their online printing operation in 1999, applied for trademark registrations for several variations of “PrintingForLess” in the United States in 2003, and had registrations granted to them in 2005. Respondent Intech Printing registeredbestprintingforless.com in 2004, approximately five years after PrintingForLess.com registered their domain printingforless.com. Users who entered bestprintingforless.com would find an offering of services substantially similar to the services offered on printingforless.com.After the deadline for a response to be filed by Intech Printing expired, the Panel assigned to the case proceeded to hear the complaint pursuant to the UDRP. The relevant rules instruct Panels overseeing domain name disputes to proceed with a case on the basis of the complainant’s undisputedallegations, so long as those allegations and inferences from those allegations are reasonable and there is no contradictory evidence. These rules apply equally to cases where no response is filed.
A Notably Detailed Analysis of a Case, Despite the Absence of an Answer
The facts were quite clear in satisfying the elements of a UDRP dispute. The Panel found 1) the disputed domain name to be confusingly similar to the registered trademark “printingforless.com”, 2)that Intech Printing had no legitimate interests in the disputed domain, and 3) that Intech Printing registered and used the disputed domain in bad faith.What is notable about this UDRP decision is the level of detail used by the Panel in analyzing each element in a dispute with no response. This is especially so when compared to a default occurring at a state or federal court of the United States. In fact, on the second element, the Panel gave a full analysis of the allegations made by PrintingForLess.com, despite the fact that the Panel could have ruled the element as satisfied at the end of the first paragraph of the discussion. The Panel cited a case holding that the mere filing of a complaint constitutes the establishment of a prima facie case,and instead of concluding the discussion at this point, the Panel continued the discussion for two more paragraphs regarding the second element. This attention to detail leaves the gates of possibility wide open for an improperly pleaded UDRP complaint to be ineffectual in securing a domain transfer, even in UDRP disputes with no response.The importance of properly pleading the elements of a case cannot be over emphasized. Under the UDRP, panelists must still analyze the complaint before granting a domain transfer in a UDRP dispute with no response. The internet community seems to place a level of importance to this process, in light of the criticism the Czech Arbitration Court received on their proposal to offer an expedited UDRP process where no response was filed.(http://www.adr.eu/arbitration_platform/news.php). Considering the outcome for a default is a transfer of the domain name, this adherence to a strict analysis of a UDRP complaint in cases without a response is understandable. The lesson here is completeness: make it easy for the UDRP Panel hearing your case to decide in your favor. UDRP Panels are paying attention to your pleadings, even if the respondent fails to answer.
Mixed Results? UDRP Proceedings Versus a United States Trademark Infringement Action
To compare PrintingForLess.com’s decision to file a UDRP complaint with their other option, filing a complaint in a United States Federal court, one can see why the former was the choice. A simple answer is cost: UDRP disputes in the National Arbitration Forum or WIPO have a fee range of $1300- $4000 plus legal costs, which are also relatively contained due to the expediency with which UDRP cases are resolved. Alternatively, legal fees associated with just the filing of a complaint for federal trademark infringement may already reach the cost of a completed UDRP proceeding, and provides no guarantee of finality.The standard in a federal court in the United States is whether there is a “likelihood of confusion”between the two marks. A federal court would analyze whether Intech Printing’s registration and use of bestprintingforless.com was a commercial use of PrintingForLess.com’s trademark that was likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. The legal test for this can involve the analysis of as many as seven factors! This easily translates into higher legal fees.There are many similarities within the legal authority guiding UDRP disputes and US trademark infringement suits. For example, U.S. common law also holds that the addition of a single modifier toa trademark will not shield a defendant from an infringement claim. This is essentially identical to UDRP precedent which has established that “the addition of a single, generic term to a complainant’smark is not sufficient to render the domain name distinct from the mark.”One difference in UDRP disputes and U.S. trademark law is the applicability of laches, an equitable defense applied when a plaintiff is found to have “slept on his rights.” Laches is a formidable defense under U.S. trademark law, whereas laches has had limited and sporadic results in UDRP proceedings.In the case at hand, Intech Printing may have had a good argument in a federal court in the U.S. for a laches defense due to the seven years which passed between Intech Printing’s registration of the disputed domain and PrintingForLess.com’s filing of an action. In the United States, delays in bringing an action of three years and eight months have been held to be sufficient for establishing a laches defense. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 U.S.P.Q.2d 1203 (TTAB2006).
For PrintingForLess.com, filing a UDRP dispute might not just have been a cost-cutting measure, but also a strategic one as well.