In the online world, it is often difficult to ascertain the identities of website owners, especially when they are sophisticated entities who use alias accounts to intentionally mask their identities. Whilst the Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings can help brand owners to recover domain names that infringe their trade mark rights, it can be expensive when the number of infringing domain names increases.
Consolidating these UDRP proceedings may be a good solution to this problem.
According to section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ('WIPO Jurisprudential Overview 3.0'), brand owners can file one proceeding against multiple domain owners, provided that (i) the domain names are under common control; (ii) and that the consolidation would be fair and equitable to all parties.
In deciding the meaning of 'common control', the panel will take into account the relevant facts. For instance, two domain names would satisfy this requirement if they were evidently involved in the same phishing scam, despite having different registrant details and IP addresses. In Apple, Inc. v. WhoIs Privacy Services Pty Ltd. et al. (WIPO Case No. D2013-1312), it was set out that 'sufficient unity of interests' must otherwise exists, so that the parties may be treated as a single domain name holder for the purposes of the Policy.
In WIPO Case No. D2015-0066, Hoffmann-La Roche AG filed a consolidated UDRP complaint against 153 domain names, involving 90 registrants. The complainant provided a detailed spreadsheet showing how these domains were inter-connected by demonstrating that the content templates, email addresses and contact phone numbers used were identical, and how the Internet users were directed to the same website. The Panel held this to be sufficient to prove that 'on the balance of probabilities, the disputed domain names are controlled or under the common ownership of the same person or the same organisation of individuals acting in concert'.
Nonetheless, brand owners must not use consolidate complaints as a way to eliminate or reduce investigations, as this may fall short of the second requirement - fair and equitable to all parties.
In O2 Worldwide Limited v. Dan Putnam et al. (WIPO Case No. D2017-0658), involving 50 domains all of which included the 'O2' trade mark, the Panel rejected the consolidation request on the basis that the registrants were too loosely connected and the administrative burden imposed on the WIPO Center was undue. It further stated that 'what the Complainant has sought to do is throw a large number of disputed domain names registered by a large number of separate Respondents into one Complaint, request consolidation on the basis of a general assertion of connectedness, rely on the Center to verify the situation of every disputed domain name and Respondent to identify those against whom the Complaint can proceed, and rely on the Panel to work through the case of every Respondent to determine in respect of whom consolidation would be fair and equitable. The Panel does not wish to encourage Complainants to adopt this approach'.
In times of COVID-19 pandemic, there has been a surge in online activities as businesses strive to reduce cost and increase efficiency and consumer reach. Therefore, it is even more important now to have a sound online brand protection strategy that takes into consideration the profiles of the targets, the appropriate actions and the amount of resources to allocate. Undeniably, there is no one-size-fits-all strategy, but being specialised, practical and creative is how we are able to maximise the impact of UDRP proceedings for our clients.
If you have any questions or require any assistance in online brand protection, please contact our Online Brand Enforcement team at firstname.lastname@example.org.