Pairs of Cases: Similar Facts, Different Results

Pairs of Cases: Similar Facts, Different Results

    In the comment “Punting or Admirable Restraint” I reported on a case that the Panel held was not ripe for determination under the Policy. The issue there concerned lack of subject matter jurisdiction and brought into play panelists’ discretion in dismissing a complaint. This comment reports on a pair of cases that were ripe, but two different three-member Panels (having one member in common) came to opposite conclusions as to the parties’ rights in the disputed domain names. Drugstore.com, Inc. v. Nurhul Chee/ Robert Murry, D2008-0230 (WIPO May 9, 2008) (<drugstoretm.com>, Complaint denied over dissent); Drugstore.com, Inc. v. Kevin Andrews, D2008-0231 (WIPO May 9, 2008) (<mydrugstore1.com>, Transferred over dissent). These cases illustrate concerns about “subjective” and “objective” analyses of the facts and the politics of inference.

    In the history of UDRP cases, there have been several of such pairs falling on either side of the line. An example of one other pair illustrates the point: Houghton Mifflin Company v. Unasi Management Inc., FA0504000469107 (Nat. Arb. Forum June 16, 2005) (Complaint denied); Houghton Mifflin Company v. LaPorte Holdings c/o Admin., FA0504000469115 (Nat. Arb. Forum June 17, 2005) (Transferred). In the first decision the Panel did not apply the evidentiary rule shifting the burden of persuasion to the Respondent to explain why he registered the HOUGHTON mark and in the second case the Panel applied the evidentiary rule. When these splits occur, they undercut what jurisprudences strive for, consistency.

    In the Drugstore cases, the majority in the second case noted that the different results “may in part simply reflect a differing assessment of facts and likely motive given the examined record in each case, rather than any underlying divergence of opinion as to applicable principles under the Policy.” This is less than a helpful observation, because it introduces a concept, “likely motive,” that can hover on the line separating subjective and objective. Both majority and dissent adhere to the correct principles, but interpret the evidence differently, that is they draw differing inferences.

    Reading motivation and intention from conduct, of course, is done all the time, but there has to be sufficient evidence of conduct for the inference of bad faith to be valid. This was the dissent’s complaint in the first of the Drugstore cases:

My co-panelists made a subjective determination regarding the Respondent’s intent without any analysis of the nonexclusive, objective criteria of bad faith set forth in paragraphs 4(b)(i)-(iv) of the Policy. Once this failure was called to their attention, they simply added language that they had considered paragraphs 4(b)(i)-(iv) without conducting any evidentiary analysis.

    He concluded that

I do not believe that the arbitrators in a UDRP proceeding can ignore the objective criteria of paragraphs 4(b)(i)-(iv) and substitute their subjective determination or personal motivations that a claimed mark is generic or is weak as descriptive, then proceed to find a lack of bad faith and deny relief to the Complainant.

    Deciding whether the respondent has acted in good faith or not sometimes requires making a judgment call, giving one party or the other the benefit of the doubt. It is unclear in the Drugstore cases what evidence the Panels had to work with, particularly in light of comment by the dissent in the first decision in which he commented that he “asked to accept the supplemental filing of Complainant and Respondent’s reply” but was overruled by the majority.