Sowing the Seeds of a Fruitful UDRP Claim | Practical Law

Sowing the Seeds of a Fruitful UDRP Claim | Practical Law

A discussion of the Del Monte Foods, Inc. v. Kensington Capital Group Uniform Domain Name Dispute Resolution Procedure (UDRP) decision and the key elements of a successful UDRP claim. This Update includes a link to a customizable form UDRP complaint with helpful drafting notes and practice tips.

Sowing the Seeds of a Fruitful UDRP Claim

Practical Law Legal Update 8-605-3446 (Approx. 4 pages)

Sowing the Seeds of a Fruitful UDRP Claim

by Practical Law Intellectual Property & Technology
Published on 23 Mar 2015 • USA (National/Federal)
A discussion of the Del Monte Foods, Inc. v. Kensington Capital Group Uniform Domain Name Dispute Resolution Procedure (UDRP) decision and the key elements of a successful UDRP claim. This Update includes a link to a customizable form UDRP complaint with helpful drafting notes and practice tips.
The Uniform Domain Name Dispute Resolution Procedure (UDRP) is highly popular among trademark owners, given its relatively low cost and the speed with which a decision is reached. Additionally, when they challenge alleged cybersquatters in a UDRP proceeding, trademark owners usually prevail. For example, an average of over 87% of UDRP proceedings filed with the World Intellectual Property Organization (WIPO), one of the more popular domain resolution service providers, result in the cancellation of the subject domain name or its transfer to the complainant.
However, in a decision that defied statistics, last month fruit and vegetable giant and trademark owner Del Monte Foods, Inc. failed to win transfer of the delmonteexpress.com, delmontefarm.com and delmontefarms.com domain names from a California real estate company.
Del Monte filed a UDRP complaint against the domain names' registrant and submitted evidence of use of its various DEL MONTE trademarks for over 120 years (Del Monte Foods, Inc. v. Kensington Capital Grp., No. D2014-2215, (Feb. 11, 2015)). But Del Monte could not prove that the registrant was using the domain names in bad faith.
This highlights the need to evaluate a potential UDRP claim for evidence to prove each required element. Because there is no discovery mechanism in UDRP proceedings, sufficient evidence may be hard to obtain.
For more on cybersquatting claims and remedies in general, as well as other online trademark issues including the new gTLD system and trademark use in social media, see Practice Note, Internet Brand Protection.

Required Elements

To prevail in a UDRP proceeding, a complainant must establish each of the following:
  • Identical or confusing similarity between the domain name and the complainant's trademark. The complainant's mark or marks on which it relies need not be registered.
  • The domain name holder (the respondent) has no legitimate interests in the domain name at issue. If the complainant provides a credible reason why the respondent should be considered as having no rights or legitimate interests in the domain name, the burden generally shifts to the respondent to demonstrate some legitimate interest.
  • The respondent registered and is using the domain name in bad faith. This element is typically a complainant's greatest evidentiary challenge and is what Del Monte Foods was unable to prove.

The Challenge of the Bad Faith Requirement

Proving the bad faith element is particularly challenging in UDRP proceedings, where no effective discovery mechanism exists and a complainant is often limited to submitting information obtained through communications with the respondent or from publicly available sources. In ruling against Del Monte, the WIPO panel that decided the claim acknowledged that the record was less developed than it likely would have been in a judicial proceeding, which might have yielded a different outcome.
UDRP policy specifically lists the following four circumstances that can satisfy the bad faith element:
  • The respondent's primary purpose in registering the domain name was to sell the name to the complainant who owns the trademark or to the complainant's competitor.
  • The respondent registered the domain name to prevent the owner of a mark from using it in a corresponding domain name and the respondent demonstrates a pattern of this conduct.
  • The respondent registered the domain name primarily to disrupt a competitor's business.
  • The respondent used the domain name intentionally to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the complainant's mark.
However, this list is non-exhaustive. Additional circumstances that may show a respondent's bad faith include the respondent's:
  • History of acquiring domain names using well-known marks.
  • Provision of false contact information.
In Del Monte's case, its opponent, Kensington Capital Group submitted evidence of its rights in and good faith registration and use of the subject domain names that WIPO found "somewhat plausible," including:
  • The location of Kensington's business near the Del Monte Forest in California.
  • A 2007 federal trademark registration for the mark DEL MONTE REALTY SERVICE.
  • 2007 business name filings for Del Monte Farms and Del Monte Express.
  • A business plan for an as-yet unlaunched grocery business specializing in products from the Del Monte region.
Although Del Monte tried to show that Kensington's alleged business plans for the domain names was a pretext, WIPO ruled against Del Monte, finding that it failed to prove that Kensington more likely than not registered the domain names in bad faith.
For a customizable template for a UDRP complaint, including a complete list of issues to evaluate before filing and helpful drafting tips, see Standard Document, Domain Names: UDRP Complaint.