0.7 Consolidation Against Multiple Respondents
Under Rule 3(c) a UDRP Complaint may relate to multiple domain names “provided that the domain names are registered by the same domain-name holder”. The phrase “same domain-name holder” means either that the same person holds all of the disputed domain names or that the domain names are under common control. Circumstantial evidence can establish a single domain name holder, such as;
-all domain names are registered through the same registrar,
-the domain names are registered within a relatively short time-period,
-common pattern (e.g. all domain names represent mark + generic/geographic term),
-content of the websites by the domain names (if any),
-registrants’ contact information.
Where a single domain name holder is not established, a party may request consolidation of multiple domain name disputes under Rule 10(e) which provides for the general powers of a Panel. Consolidation of multiple domain name disputes may not be appropriate where the respondents are different parties such as when there is a response from one of the respondents.
Additional Information
Relevant Decisions
Coachella Music Festival, LLC v. Tonya Sanders / Social.Digital.Me / Jamila Brown / Jada Casting, Forum FA2408002112502, <votechella.com et. al.>, Split decision
In light of the passage of six years between the registration of the <votechella.com>, <votechella.info>, <votechella.net> and <votechella.org> domain names and the registration of the <votechellamusicfestival.org> domain name with a different Registrar, the different name and address of the registrant of that domain name and the different website to which that domain name resolves, the Panel finds that Complainant has not furnished any concrete evidence to establish that the <votechellamusicfestival.org> domain name is subject to common control with the registrant of the <votechella.com>, <votechella.info>, <votechella.net> and <votechella.org> domain names.
Harley-Davidson Motor Company, Inc. v. lina, CAC-UDRP-106559 (2024), <harley.vip>, <harleyy.vip>, <harley-davidson.vip>, Rejected
The fact that the active disputed domain names are used to purportedly offer crypto asset services and the other commonalities to which the Complainant refers, do not together reach a threshold sufficient for the Panel to conclude that on the balance of probabilities the three disputed domain names are held or controlled by a single entity or entities acting in concert. HARLEY-DAVIDSON is a very famous mark and is not implausible that two or more different registrants, with no connection with each other, would choose and adopt the mark and incorporate it into domain names.
Blackstone TM L.L.C. v. Williams Euphemia / Jones Geoffrey, Forum FA2405002097463, <blackstoneaig.com> et. al., Denied
Complainant has therefore failed to prove that all of the disputed domain names are held by the same registrant or even by different registrants acting in concert.
The application to consolidate the proceedings in respect of all of the disputed domain names must therefore be refused. Given the large number of domain names, at issue and that the registrants are differently identified in the WhoIs information, it would probably have been more appropriate and efficient to bring two separate applications.
The Procter & Gamble Company v. Shi Lei / wojciech drewniak, Forum FA2404002095179, <pggodeveryday.com> and <coupontide.com>, Transfer in part, Denied without prejudice in part
The Panel finds that allegation (a) above does not necessarily indicate that the domain names are under common control. Allegation (b) it contradicted by the evidence set forth by Complainant, which shows that both domain names are not being used.
Thus the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule only on the <coupontide.com> domain name, and it will dismiss, without prejudice, the complaint regarding the <pggodeveryday.com> domain name.
Deutsche Börse AG v. Tsolakis Costas and others, CAC-UDRP-106151 (2024), <radeurex.com>, et. al., Partial transfer
In the opinion of the Panel and again for the reasons it set out in the Meta Platforms, Inc case, there are strong arguments that the requirement of “common control” is no longer fit for purpose and it would be better if it were replaced with a provision that gave a discretion to panels to allow claims brought against multiple names registrants, subject to the proviso that the panel be satisfied that doing so would be equitable and procedurally efficient… The difficulty in this case is that at least one of the registrants has participated in these proceedings and contends that although it controls 31 of the disputed domain names, it is not responsible for the others; claiming that these other domain names are controlled by other entities that are using similar Google scanning techniques to identify and register domain names and create websites that are in a form that is similar to but in places different from those of this registrant.
Morgan Stanley v. tony ferris / Shantanu Rangnekar, Forum FA2309002061514, <morganstanley-canada.com> and <morganstanleyca.com>, Transfer in part, denied in part
The Panel finds that Complainant’s allegations do not necessarily indicate that the domain names are under common control: the registrar and hosting service are well known and used by large numbers of registrants; the domain names were not registered on the same day; the resolving pages are parked pages from the hosting service, so their content is not necessarily specifically composed by the registrants. Thus the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity. In light of the joint communication from Complainant and one of the named Respondents (see below), the Panel will rule only on the <morganstanleyca.com> domain name, and it will dismiss, without prejudice, the complaint regarding the <morganstanley-canada.com> domain name.
Wilson’s Gun Shop dba Wilson Combat v. Hieu Nguyen / Dane Schemel / Southern Trapper, Forum FA2305002044813, (<wilsoncombatmagazines.com>, <wilsoncombatcqb.com>, <wilsoncombat1911.com>, <wilsoncombatholster.com>, <wilsoncombatberetta.com>, <wilsoncombatglock.com> and <wilsoncombatedcx9.com>, Transfer with a dissent
Majority View:
Having in mind the teaching of Rule 10(c) that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition,” we elect in these exceptional circumstances to exercise the discretion granted to us by Rule 10 to do essential justice by construing Rule 3(c) as applying here, not at the moment of filing, but at the moment of decision. The practical consequence of this construction is that, once the claim against Respondent Schemel has been disposed of by an agreed transfer of a single domain name between the two affected parties and the case has thus been terminated as to that Respondent, the unrepresented Complainant may proceed against the remaining Respondent without offending either the letter or the spirit of Rule 3(c). Importantly, our determination in this regard will work no injustice upon any party…
We also have in mind that our brief and non-exhaustive survey of UDRP decisions reported out of both the WIPO system and that of Forum has not revealed any decision treating the precise procedural question before us here, so that it appears to be a case of first impression. One like it may never occur again. But, if it does, panelists should know that they are free in the proper case to interpret and apply the rules in a way that is sensible, flexible and humane without working unfairness upon any party.
Finally, we take note of the history of our calling, which records that modern arbitral practice in the commercial sphere, including the UDRP system, was adopted precisely to provide a platform on which the parties could find a fair resolution to a commercial dispute free of the too often crushing waste of time, process and cost that have become the hallmarks of commercial litigation. Simplicity, expedition, economy and overarching fairness are thus the foundation of modern arbitration. Rigid administration of the process, even when propelled by the best of motives, eats away at that foundation.
Dissenting opinion:
The phrase “same domain name holder”, in Rule 3(c), has been construed liberally to include registrants who are not the same person but under circumstances suggesting that the domain names are controlled by a single person, entity, or related entities… Upon a review of the evidence presented, this Panelist believes that we are dealing with two separate cases here.
Meta Platforms, Inc., Instagram, LLC, WhatsApp, LLC v. Domains By Proxy, LLC / Emir 100k / fdsf dfsds / lnstagram help, lnstagram Yardim Merkezi and others, WIPO D2022-0212, <fbhelpservice.com>, et. al., Transfer
6.18. It is inherent in this description of panel practice and its reference to “common control”, that previous panels have adopted a wide interpretation of “same domain name holder.
6.19 In this particular case, common factors that connect all of the Domain Names is that they were all registered with a single Registrar over a relatively short period of time.
6.20 It is also clear that certain groups of Domain Names are undoubtedly controlled by the same person…
Basic Trademark S.R.L. v. David Klein, Tom Nadel, Annett Mehler, Frank Sommer, Jens Schulze, Markus Wolf, Jens Scholz, Patrick Baier, Julia Eisenhauer, Dieter Theissen, Anja Abend, Christ Bieb, Andreas Rothstein, Annett Schmid, Daniel Kalb, ZhuangLi Feng , WIPO D2021-4255, <kappa-chile.com and 33 other Domain Names>, Transfer in part, Denied without prejudice in part
However, the Panel does not find a sufficient basis in the record to infer that the disputed domain names <discountkappa.com> and <kappaclearance.com> are under common control with the other 32. It is true that these two disputed domain names incorporate the same trademark as the others plus another word, but they were registered over two years earlier, by registrants in China, and they do not follow the pattern of including a geographical term.