Complaint fails despite clear evidence of fraud — UDRP cybersquatting

Panelist states UDRP can’t be used without proven trademark rights, even in clear cases of fraud.

UDRP is designed to handle clear-cut cases of cybersquatting. There are cases of clear-cut fraud and bad faith use that don’t qualify as cybersquatting under UDRP. The Complainant must meet all three elements required to win the case.

The first element is that the domain is identical or confusingly similar to a trademark in which the Complainant has rights.

In a recent case, the Complainant failed to prove this. It was clear that the domain registrant was using the domain to commit fraud against the Complainant; still, the panelist rejected the claim on the identical or confusingly similar prong of the UDRP.

Capital Bay Funding, LLC filed the complaint (pdf) against the domain name capitalbayfunding .com.

The registrant is attempting to pass itself off as the Complainant and has even included the Complainant’s address on its website.

It’s clear fraud.

But…Capital Bay Funding was not able to convince panelist Frederick M. Abbott that it had common law rights in Capital Bay Funding.

Abbott even gave the Complainant an extra opportunity to prove its trademark rights since the domain owner didn’t respond.

But Capital Bay Funding still failed to meet the minimum requirement. Abbott wrote:

Complainant has provided evidence that it has been targeted by Respondent. Complainant appears to be the subject of unfair, if not unlawful, business practices by Respondent. The Policy was designed with limitations. One of those limitations is that successful causes of action are predicated on the establishment of trademark rights by those alleging abusive domain name registration and use. While Complainant may have a valid claim in court, Complainant has not satisfied that threshold burden under the Policy.

Although the result here may appear “harsh”, the Panel ought to not expand or rewrite the Policy since of a problematic result for Complainant. Panelists adhere to a consistent standard. The requirement of demonstrating rights in a trademark is an immutable element of the Policy.

The UDRP was rejected.

Nelson Mullins Riley & Scarborough LLP represented the Complainant.