Domain Names Eviction Posse

May 20, 2009

When Fulham FC, Spurs, West Ham, Manchester United and Liverpool consolidate their complaints, one immediately thinks in terms of a concerted attack on referees. But for once referees were in the clear when their consolidated complaints were heard by the WIPO Arbitration and Media Center. The five disputed domain names were and the like.

The substance of the claim was of no real novelty. The complainant football clubs held relevant trade marks, the addition of the generic terms ‘official’ and ‘tickets’ is insufficient to create a separate and distinct domain name and the holder of the domain names was alleged to be selling unauthorised tickets and generally acting in bad faith. A case brought by Arsenal (WIPO Case No. D2008-0842) had covered the same ground (and probably involved the same respondent). All the disputed domain names were transferred over.

The interesting aspect of this case was the lengthy consideration given to the principles of consolidation of complaints given by Alistair Payne, who was acting as sole panellist. As he remarks little consideration had been previously been given to the issue of when it might be appropriate to permit a consolidated complaint involving multiple complainants and multiple domain names against a single registrant. He adopted the principles put forward in a dispute about an Australian domain name (National Dial A Word v 13000 Directory) and then set out the following general principles applicable to consolidation under the UDRP.

[T]he consolidation of multiple complaints in a single complaint should be permitted if the complainants:
(i) have a common grievance against the respondent; and
(ii) it would be equitable and procedurally efficient to permit the consolidation of complaints.
… to establish a common grievance against the respondent… multiple complainants must;
(i) have a common legal interest in the trade mark rights on which the complaint is based; or
(ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.
Instances where multiple complainants may establish a common legal interest would include where:
(i) the multiple complainants have a shared interest in a trade mark, such as may exist between a licensor and a licensee; or
(ii) the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture; or
(iii) the multiple complainants are members of an established association or league (such as a sporting association) in which individual members have rights authorized to be enforced by the association, both the association and the members should have standing to appear as multiple complainants in a consolidated complaint against a single respondent.
If multiple complainants cannot establish a common legal interest sufficient to justify their consolidation in a single complaint, to satisfy the “common grievance” limb of the test the complainants must establish that the respondent has engaged in common conduct that has affected their individual rights in a similar fashion. Such common conduct may be found to exist:
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or
(ii) where there is a clear pattern of registration and use of all the disputed domain names in question.
If the multiple complainants establish that a common grievance exists against the respondent then the panelist considered that the second limb of the test should be addressed: would it be equitable and procedurally efficient to permit consolidation of the complainants?
In determining if the second limb of the test is satisfied the panel in the National Dial A Word case took into account the following factors:
(i) whether there is any apparent reason why it would not be equitable to permit consolidation of the complainants;
(ii) the extent to which the complainants’ substantive arguments made under each of the three elements of the Policy appear to be common to the disputed domain names;
(iii) whether all complainants are represented by a single authorized representative for the purpose of the proceedings;
(iv) whether the complainants clearly stipulate each disputed domain name, the individual complainant making a claim thereto, the right or rights relied upon by that complainant, the remedy sought in respect of the disputed domain name, and the registrar with whom the disputed domain name is registered;
(v) whether the case involves a relatively small number of domain names;
(vi) that relevant filings, including any annexes, would not appear to be unreasonably voluminous;
(vii) whether there is an applicable fee schedule covering the complaint as filed.
In broad terms this Panel considers that the test outlined above is appropriate and balanced and is consistent with the aim of the UDRP to combat cybersquatting in as efficient and cost effective a manner as is fairly possible. However the test must be applied judiciously and depending upon the circumstances of particular cases may require the exercise of a panel’s discretion in adapting it as appropriate.

The full decision can be accessed here