Consolidation is an efficient and cost-effective approach when handling domain infringements, be it several brand owners against a single respondent, or a single complainant against multiple respondents. However, it is not always possible to consolidate and those who do should ensure that they consult a) the UDRP Rules (’Rules’) and b) the WIPO Overview (‘Overview’).
When filing via WIPO, the main provision to note is Policy, Paragraph 10(e) of the Rules, which states that: ‘A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.’ Next, Paragraph 3(c) of the UDRP Rules states that: ‘The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.’ There are also other factors to consider if you are supporting a consolidation request for multiple complainants and respondents.
The Overview outlines that consolidation of multiple respondents is permitted provided:
Following the Whois blackout of 2018, many domain owner details were redacted, meaning that complaining parties have had to rely on other factors such as i) common registrars, ii) website content, iii) commonalities in domain prefixes and/or suffixes and iv) common hosting providers.
Realistically, a complaining party would want to rely on as many of the above factors as possible to support a consolidation request. If they solely rely on a common domain registrar like GoDaddy, this is unlikely to sway the panel as GoDaddy is a popular domain registrar. A recent example of a consolidation request being accepted was Virgin Enterprises Limited v. Guman Sulaen et al. Case No. D2021-2689, where panelist Matthew Kennedy held that:
‘As regards common control, the Panel notes that the disputed domain names were all registered  within a very short period of three days  using the same privacy service and  they all incorporate the same trademarks in similar configuration.  Three of the disputed domain names currently resolve or formerly resolved to similar websites promoting cryptocurrency schemes, sharing the same layout and displaying some identical content.’ (Emphasis Added).
The more challenging task comes when you attempt to file complaints on behalf of multiple complainants, unless the parties have a common legal interest e.g., they are part of the same corporate structure (see Mercado Libre, Inc et al. v. Nelio Menezes. Case No. D2021-1698). However, the Overview states that consolidation of complainants is permitted providing the following criteria are met:
Therefore, theoretically complainants not part of the same corporate structure can consolidate a UDRP (concerning multiple domain names) against a single respondent. For example, this was successful in the dispute between Fulham Football Club (1987) Limited et al. v. Domains by Proxy, Inc./ Official Tickets Ltd. Case No. D2009-0331, panelist Alistair Payne held that:
‘The Complainants are […] seeking to protect their trade mark rights individually, not jointly with each other. Thus, it seems clear from the Complaint that there is no legal interest affected by the Respondent's conduct that is common to the Complainants…. However the Complainants have established that the Respondent has engaged in common conduct which has affected their legal rights in a similar fashion.’
Therefore, while the complainants were not part of the same legal entity, they were still able to consolidate due to their ‘common grievance’. These findings have shown little application in more recent cases, such as Covestro Deutschland AG et al. v. Pat Honey Salt, Honey Salt ltd. Case No. D2021-0877, where the panel held that:
‘… the Complainants do not appear to have any apparent connection between the Complainants. Rather it appears that a number of … separate parties have filed a single claim (in the nature of a purported class-action) against the Respondent, arising from similar conduct.’
In summary, consolidation (whilst effective), should be assessed strictly and substantiated with evidence explaining why the consolidation should be granted, with reference to the Overview and the UDRP Rules.
If your brand needs advice in relation to online enforcement, please get in touch with Stobbs at www.iamstobbs.com or on +44 (0)1223435240.