Anchovy News, November / December 2021

Hogan Lovells
Contact

Hogan Lovells

This is the November/December edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:

DOMAIN NAME INDUSTRY NEWS

  • .EU domain names set to drop
  • A brand new .DAY Is coming
  • SWITCH introduces deferred delegation for .CH and .LI

DOMAIN NAME RECUPERATION NEWS

  • Evidence of targeting is not only a plus
  • Complainant left feeling blue
  • Reverse Domain Name Hijacking for overlooking UDRP’s key principles

Newsletter sections:

For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.

Domain name industry news

.EU domain names set to drop

On 23 November 2021, EURid, the Registry responsible for managing the country code Top Level Domain (ccTLD) .EU (European Union), announced that it would be allowing about 48,000 .EU domain names to drop.  These domain names are generally registered to UK registrants who are no longer able to meet the .EU eligibility requirements following the withdrawal of the United Kingdom from the European Union.

As regular Anchovy News readers will know, only eligible entities can generally register .EU domain names, that is to say companies and organisations that are established in the European Economic Area (EEA) as well as individuals who are either citizens or residents of the EEA.  The EEA includes the 27 countries of the European Union (EU) as well as Iceland, Liechtenstein and Norway.

At the time of the Brexit referendum in 2016, there were nearly 300,000 .EU domain names registered in the UK, most of which have since been lapsed or transferred to eligible entities.  All registrants who did not demonstrate their compliance by the given deadline saw their domain names move to a “suspended” status on 1 January 2021, meaning that the domain names could no longer support any service, but could still be reinstated if the registration data was updated to meet the eligibility criteria by 30 June 2021. 

On 1 July 2021, the domain names that were still non-compliant moved to a “withdrawn” status (meaning that they could not function and were no longer in the .EU zone file) and will remain in that state until their deletion by EURid.

Any UK registrants who think they can prove their compliance and have not yet done so should contact EURid directly before 31 December 2021.  If no action is taken by this date then the 48,000 or so “withdrawn” domain names will be dropped on 3 January 2022 as from 10:00 CET.  The domain names will be released in batches throughout the day and will be available for registration on a first-come, first-served basis. 

To see the Brexit withdrawal notice, please click here.

Back to the top.

A brand new .DAY is coming

The Google domain name Registry, which runs several new Generic Top Level Domains (gTLDs), including .APP, .DEV and .PAGE, has recently launched the new gTLD .DAY. 

Google sees .DAY as the ideal extension to promote or highlight a special day or event, be it for personal or professional purposes, such as a wedding or a special work event. 

Google is launching .DAY domain names according to the following three phases:

1. Sunrise: 14 December 2021 - 25 January 2022

During this phase, trade mark holders who have registered their trade mark(s) with the Trade Mark ClearingHouse (TMCH) can apply for the corresponding .DAY domain name(s).

2. Early Access Period (EAP): 25 January 2022 - 1 February 2022

The EAP will be open to the general public on a first come, first basis, but during this phase domain names will be available at higher prices than normal.  Prices will decrease day by day, thus a domain name will be much cheaper on the seventh day of the EAP than on the first day. 

3. General Availability: From 1 February 2022 onwards

As of 1 February 2022, .DAY domain names will be available for registration on a first come, first served basis.

To visit the Google Registry website, please click here.

Back to the top.

SWITCH introduces deferred delegation for .CH and .LI

On 2 December 2021, SWITCH, the Registry for the .CH (Switzerland) and .LI (Liechtenstein) Top Level Domains (TLDs), introduced a system of deferred delegation for new registrations aimed at better protecting Internet users against malware and phishing.

Pursuant to Article 25 of SWITCH’s Ordinance on Internet Domains, if the Registry suspects that a registration is fraudulent, the domain name will be assigned, but SWITCH will prevent it from being added to the zone file and will contact the registrant directly by email to request that they prove their identity (by way of a passport, for example) within 30 days.  If they fail to do so, SWITCH will revoke the assigned domain name.  No refunds will be provided for revoked domain names.

The domain name remains blocked throughout the duration of the identification request period, and can be neither changed nor deleted.

Hence SWITCH joins a growing number of security-conscious Registries introducing measures to try to prevent fraud such as malware and phishing and make the Internet a safer place for all its users.  

Back to the top.

Domain name recuperation news

Evidence of targeting is not only a plus

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a domain name because the complainant had failed to demonstrate that the respondent was targeting the Complainant's identical trade mark, not least because the domain name was registered several years before the Complainant’s first use of the term, according to the evidence provided.

The Complainant was Furukawa Electric Latam S.A., of Brazil, a closed joint-stock company that was part of the global corporate group Furukawa, founded 120 years ago in Japan and engaged in numerous activities relating to metals, light metals, telecommunications, automotive systems and energy, and established in Asia, North America, Europe, Africa, and Latin America.  It was the owner of a Brazilian trade mark in SOHOPLUS registered on 12 December 2017 as well as the domain names sohoplus.com.br registered on 14 July 2008 and sohoplus.net.br on 25 September 2009.

The Respondent was Sohoplus, based in the Republic of Korea.  No further information was provided.

The disputed Domain Name was sohoplus.com, registered on 11 October 2005.  It was resolving to a website offering it for sale.

As a preliminary issue, the Panel had to determine the language of the proceedings.  Pursuant to paragraph 11 of the UDRP Rules, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise or the panel determines otherwise. 

In the present case, the registration agreement was in Korean, but the Complainant requested English as the language of the proceedings on the basis that (i) substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Korean and (ii) there were numerous English speakers in Korea and so the Respondent would likely be able to understand English.  It was therefore for the Panel to determine the language of the proceedings.  The Panel was of the view that it would not be prejudicial for the Respondent if English was adopted for the following reasons:

  • It would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
  • Being proficient in both English and Korean, the Panel considered that it was capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments;
  • None of the Parties used the same language, therefore English would be a fair language for both of them; and
  • The Domain Name itself was comprised of Roman letters, and it was not a Korean term.

Therefore, the Panel decided that it would issue a decision in English, but would consider any submissions and evidence in Korean if necessary.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i)         the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii)        the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)       the domain name has been registered and is being used in bad faith.

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trade mark SOHOPLUS and that the Domain Name incorporated the Complainant’s trade mark in its entirety.

The Panel therefore found that the Domain Name was identical to the Complainant's trade mark.  Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview 3.0, a complainant must prove that the respondent had no rights or legitimate interests in respect of the domain name in question.  A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise.  If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.

In the present case, the Complainant put forward a prima facie case to the effect that the Respondent had no relationship with or authorization from the Complainant to use its trade marks.  The Complainant further claimed that the Respondent’s interest in the Domain Name was to sell it at an excessive price as the Domain Name was pointing to a parking page with no substantive content than an offer for sale.

The Panel agreed with the Complainant and ruled that there was nothing in the record to suggest that the Respondent had made a legitimate noncommercial or fair use of the Domain Name or had been commonly known by the Domain Name.  The Respondent had not come forward with any relevant evidence of rights or legitimate interests in the Domain Name.

However, considering that certain facts in the record may support a finding that the Respondent had no rights or legitimate interests in the Domain Name, but given its finding regarding the lack of bad faith registration, the Panel decided not to make a determination under the second element of the Policy.

In the case at hand, the Complainant alleged that the Respondent registered the Domain Name long after the Complainant’s domain names were in use, claiming that it registered the domain names sohoplus.com.br and sohoplus.net.br in 2000, five years before the creation date of the Domain Name.  However, the Panel noted that the Complainant did not provide evidence in support of these contentions.  The Complainant asserted that it was clear that the Respondent was aware of the Complainant when it registered the Domain Name.  Further, the Complainant was of the opinion that the Respondent’s interest in the Domain Name was to sell it, which was not considered to be fair use.

As the Respondent did not submit any response, the Panel had the responsibility of determining which of the Complainant’s assertions were established facts, and whether the conclusions asserted by the Complainant could be drawn from the established facts.

The Panel noted that the Respondent had been using the Domain Name to point to a website offering to sell the Domain Name for an excessive price compared to the actual cost of registration.  However, the Panel also found  that the Complainant had registered its trade mark SOHOPLUS in 2017, which was 12 years after the creation date of the Domain Name.  The Complainant argued that (i) it was a global company with a long history, (ii) it had been using its trade mark to identify its products since its registration, and (iii) it owned and was using many domain names that incorporated the trade mark SOHOPLUS in its entirety.  As the Panel noted, the evidence submitted showed that the Complainant registered its earliest trade mark in 2017 and registered its earliest domain name in 2008, both of which were much later than the registration date of the Domain Name.  Critically, no further evidence of use of the Complainant's trade mark SOHOPLUS online or otherwise prior to the registration of the Domain Name had been submitted.

Relying on the decision Green Tyre Company Plc. v. Shannon Group (WIPO Case No. D2005-0877), while certain facts in the record may support a finding that the Domain Name was used in bad faith use, the Panel was of the view that they could not overcome the fact that the registration date of the Domain Name predated the Complainant’s registration date of both its trade marks and domain names, and so the Panel found that it did not need to make a determination on whether the use of the Domain Name was in bad faith or not.

As stated in section 3.8 of the WIPO Overview 3.0:

"Subject to scenarios described in 3.8.2 below [domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)"

The Panel underlined that this was a well-established position and though it was subject to limited exceptions (namely where the facts of the case established that a respondent’s intent in registering a domain name was to unfairly capitalize on a complainant’s nascent trade mark rights), the facts of the case at hand did not support the application of such an exception.

Accordingly, the Panel was unconvinced by the Complainant’s arguments that the Domain Name was registered in bad faith and the Complaint was therefore denied.

Comment

This decision highlights the fact that trade mark holders will not necessarily succeed in obtaining the transfer of a domain name identical to their trade mark under the UDRP, especially when the domain name was registered well before the trade mark at issue.  In other words, evidence of targeting is crucial in order to prove bad faith registration under the UDRP. 

The decision can be found here.

Back to the top.

Complainant left feeling blue

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name azulmusic.com, finding that, while it was identical to the Complainant's trade mark, the Respondent acted in good faith and did not target any particular trade mark when it listed the domain name for sale on its platform.

The Complainant was Azul Music Multimidia – Eireli, a Brazilian record label and music corporation established in 1993.  It stated that it had produced over 20 million albums and songs that were present in digital platforms, films, documentaries, soap operas and advertising soundtracks, both in Brazil and internationally.  The Complainant owned a registered trade mark in AZUL MUSIC in Brazil, registered on 27 December 2005.

The Complainant also operated on the Internet, owning the domain name azulmusic.com.br registered on 22 September 1998, which resolved to its corporate website promoting the Complainant's albums and artists both in Portuguese and English.

The Respondent was in the business of buying and selling domain names.

The disputed domain name, azulmusic.com, was registered on 12 August 2017 and redirected to http://www.perfectdomain.com/, a platform in English offering the disputed domain name, as well as other domain names, for sale.  The evidence produced by the Complainant showed that, at the time the Complaint was filed, the disputed domain name was being offered for sale for USD 2,599.

To be successful in a complaint under the UDRP, a complainant must satisfy the three elements set forth in the Policy under paragraph 4(a):

(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith

The purpose of the first element is to determine whether the Complainant has a bona fide basis for filing the complaint.  In the present case, the Panel found that the disputed domain name was identical to the Complainant’s trade mark, and thus that the first element of the Policy under paragraph 4(a)(i) had been satisfied.  In fact, the Complainant’s registered trade mark AZUL MUSIC had been incorporated in its entirety in the disputed domain name.

Under the second element, the Complainant asserted that the Respondent had no rights or legitimate interests in respect of the disputed domain name.  The Respondent was not commonly known by the disputed domain name, did not own any trade mark application or registration in the term “azul music”, and had not been authorized to use the AZUL MUSIC mark.  Furthermore, the Complainant claimed that the Respondent had never used the disputed domain name for a bona fide offering of goods or services or in relation to a legitimate noncommercial or fair use.

The Respondent stated that it was in the business of buying and selling “generic and descriptive” domain names consisting of dictionary words or common phases in different languages, and therefore owned thousands of domain names.  The Panel consulted the website where the disputed domain name redirected, as permitted under its general powers pursuant to paragraph 10 of the UDRP Rules, and found that the disputed domain name was offered for sale together with other domain names under a section called “Similar Domains for Sale”.  However, the Panel also noted that some of the proposed domain names offered for sale on the Respondent’s website referred to the names of  third party individuals, companies or trade marks.

On a side note and under this element of the Policy, the Panel noted that the Respondent appeared to mix up the concept of a term being “generic” or “descriptive” with a term “being included in the dictionary”.  In this regard, the Panel highlighted Section 2.10 of the WIPO Overview 3.0, which states that:

“The fact that a particular term has a dictionary meaning is sometimes confused with the notion of a “generic” term.  When used in a non-dictionary distinctive sense (i.e., in a manner that bears no relation to the goods or services being sold), such dictionary terms can function as “arbitrary” trade marks […].”

Accordingly, the Panel considered that the combination of the words “azul” and “music” in the disputed domain name bore no direct relation nor resemblance to the services provided by the Complainant and thus did fulfil a trade mark function.  The fact that other companies or individuals were providing related services in the same industry also using the term “azul” did not affect, in the Panel’s view, the distinctive character of the term vis-a-vis the Complainant.

Despite this, the Panel found that the Respondent’s business may be legitimate, although this was a matter to be analysed more fully under the third element of the Policy.

The third element of the Policy requires a complainant to establish that the disputed domain name has been registered and is being used in bad faith. Here the Panel underlined that, whilst previous decisions under the Policy did not have the status of precedent, similar cases are generally decided in the same way, and it is commonly accepted that, absent factors to the contrary in a particular dispute, trading in domain names is a legitimate activity that has grown into a substantial market over the years.

Despite the evidence produced by the Complainant of its presence on the said music platforms and the use of its trade mark on the Internet, the Panel found that the evidence was insufficient to consider that the Complainant’s trade mark was well known both in Brazil and internationally.  For example, the Panel noted that, at the time of its decision, the Complainant’s Facebook page had about 2,500 followers, its Twitter account less than 400 and its Instagram account less than 800.

Moreover, at the time of filing the Complaint, the disputed domain name was not offered for more than the other domain names on the website.  In addition, there was no evidence that suggested that the Respondent would have any particular knowledge of, contact or connection to the Complainant or any other circumstance that may indicate that the Respondent acted in bad faith.

Accordingly, the Panel found that the Complainant had not met its burden under the third element and the complaint was therefore denied.  However, the Panel noted that, while the Complainant’s failure to meet its burden of proof was fatal to its case, this did not indicate that the case was brought with bad faith intent, but rather insufficient facts, arguments and supporting evidence to support the Complainant’s claim.

Comment

This decision underlines that the scope of the Policy is limited only to cases of cybersquatting, where both the registration and use of the disputed domain name is carried out in bad faith (with the knowledge and intention of taking advantage of or damaging the trade mark of a third party). The Panel specifically underlined that the decision should not be understood as an approval of the Respondent’s conduct and it did not prevent the Complainant from going to a court of competent jurisdiction if it considered appropriate to do so.

The decision is available here.

Back to the top.

Reverse Domain Name Hijacking for overlooking UDRP’s key principles

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed Domain Name streamlineservers.com and found that the Complainant’s claim constituted an abuse of the UDRP proceedings and that the Complainant had engaged in Reverse Domain Name Hijacking (RDNH).

The Complainant was GSL Networks Pty Ltd, from Australia, represented by a law firm.  According to limited factual research into public records conducted by the Panel, the Complainant appeared to have been incorporated on 4 August 2017.  The Complainant claimed (but evidence was not provided) that it had used the name “Streamline Servers” or variants thereof across various businesses since 2009.  The Complainant added that it had purchased the domain name streamline.net.nz in November 2009 and that such domain name was still active and registered to the Complainant.  Since the Complainant did not exist then, the Panel was prepared to assume that an affiliate or predecessor of the Complainant was the registrant of the domain name.  The Complainant described itself as providing high performance server hosting services through a website operated under the domain name streamline-servers.com.  The Complainant presented 24 domain names containing various versions of “streamline” and “server” that it claimed had been used for its businesses which had operated internationally for 12 years.  The Complainant also produced a list according to which it had clients based in 89 countries, including the United States in which it had 676 active services and 1,355 active clients.  Those behind the Complainant had also incorporated another Australian company, Streamline Servers Pty Ltd, in August 2017.

The Complainant was the owner of the Australian figurative mark S STREAMLINE SERVERS, registered in March 2020, and a United States trade mark for the word and design STREAMLINE SERVERS, registered in December 2020 and claiming first use in commerce in April 2016.  The registration included a disclaimer in respect of the exclusive right to use the word “servers”.

The Respondent was Alex Alvanos of Bobservers, located in the United States.  He created and registered the Domain Name in June 2004.  The Domain Name resolved to an unconfigured server page.  The Complainant however provided a screenshot, taken in April 2021, indicating that the Domain Name, at one time, redirected to a website at www.gameservers.com, which the Complainant stated was one of its competitors.  The Respondent also provided screenshots from the Internet archive service “Wayback Machine” demonstrating that, in 2004, 2005 and 2010, he had operated a game server hosting business from the Domain Name.

On 13 July 2021, the Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.  The Respondent requested that the Panel make a finding that the Complainant had engaged in RDNH.

To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was identical or confusingly similar to its trade mark STREAMLINE SERVERS, based on its continuous use and trade mark registrations.  The Complainant indicated it had rights in the trade mark in Australia and the United States and it had conducted business thereunder for 12 years. 

The Respondent did not dispute that the Domain Name was comprised of similar wording, but stated that this was unintentional.

The Panel found that the Domain Name was identical or confusingly similar and underlined that the fact that the Respondent’s registration predated the trade mark registration was not relevant to the assessment under the first element of the UDRP.  The Panel observed that the second level of the Domain Name was alphanumerically identical to the Complainant’s United States trade mark, disregarding the space in the latter, which could not be reproduced for technical reasons.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name on the basis that (i) there was no connection or relationship between the parties, (ii) there had been no communication between the parties and no authorisation to use the Complainant’s trade mark or the Domain Name, (iii) the Respondent did not own the trade name and conducted no business under such name, (iv) the Respondent had never used the Complainant’s trade mark and did not conduct any business under the name “Streamline Servers”, (v) there was no evidence that the Respondent had used the Domain Name in connection with a bona fide offering of goods and services, nor that it had been commonly known thereby.  Finally, the Complainant cited a UDRP case where the panel had found that the complainant had satisfied the second element of paragraph 4(a) by submitting that the respondent had not been using the domain name with a bona fide intent and had not made a legitimate non-commercial or fair use of the domain name.

The Respondent argued that he had registered the Domain Name because it contained the two dictionary words “streamline” and “server”, which corresponded to his interest in developing a website and business that facilitated owning a server for gamers.  The Respondent added that the Complainant’s trade mark did not exist at that time and that a respondent was not required to make use of a domain name in order to have rights or legitimate interests therein.  The fact that the Domain Name described the Respondent’s purpose was only further strong evidence of his intent to use it for a bona fide purpose.  The Respondent specified that he had actually used the Domain Name for such purpose. 

The Panel did not judge it necessary to address the question of the Respondent’s rights and legitimate interests because it concluded that the Complaint had failed on the third element.

With regard to the third element, the Complainant contended that the Respondent had registered and used the Domain Name in bad faith in order to prevent it from reflecting its trade mark in a corresponding domain name.  The Complainant indicated that the Domain Name had been used to redirect traffic to its competitor’s website, which caused disruption to its business, although such conduct had ceased.  The Complainant further argued that the Respondent was knowingly holding the Domain Name and not using it for any purpose, and there was therefore an absence of any conceivable good faith use.  The Complainant also stated that the Respondent had no credible explanation for his choice of the Domain Name and that he had taken active steps to conceal his identity by hiding his private information and using an anonymous hosting service. 

The Respondent denied the allegation of bad faith registration and explained that (i) at the time he registered the Domain Name, he could not have been aware of the existence, or even potential existence, of the Complainant or of any rights that might subsequently accrue to it (ii) he had never offered to sell the Domain Name to the Complainant and had never targeted the Complainant as a potential purchaser, nor could he have done so, (iii) more generally, when a domain name was registered before a complainant accrued trade mark rights, the complainant generally could not prove registration in bad faith as the UDRP Policy required evidence of bad faith registration and use.  The Respondent added that the Complainant had made conclusory allegations of bad faith without adducing specific evidence and that mere assertions did not prove bad faith.  As such, the claim that the Respondent had used a “server” formative domain name, once used with a game server business, to target the Complainant by redirecting it to another game server website, failed to establish intentional targeting of an Australian trade mark holder’s business, seventeen years after the Respondent registered the Domain Name.  Lastly, the Respondent claimed that the passive holding doctrine was not applicable, that other aggravating factors were required, but were not present, and that despite having priority of use over the Complainant, the Respondent had used the Domain Name for a number of years in connection with a bona fide game server business.

The Panel held that the Complainant had failed to prove that the Respondent had registered or used the Domain Name in bad faith.  Based on the evidence presented, the Panel confirmed the Respondent’s argument that the Domain Name had been registered by the Respondent before the Complainant’s trade mark rights accrued and absent any nascent or unregistered rights of the Complainant.  The Panel also held that there was no suggestion or evidence on the present record that, in registering the Domain Name in 2004, the Respondent was anticipating and intending to target any then-nascent rights of the Complainant as (i) its trade marks were registered only in 2020, (ii) the Complainant itself did not exist until 2017, and (iii), on the Complainant’s own assertion, its predecessors or affiliates had only started trading as “Streamline Servers” in 2009.  The Panel also pointed out that the Complainant bore the onus of proving that the directing of the Domain Name to a gaming server website (as shown in the Complainant’s screenshot of April 2021) was a deliberate act intended to target the Complainant’s rights.  However the Complainant had not provided the necessary evidence.

With regard to the Respondent’s RDNH claim, the Respondent considered that the Complaint was an abusive filing, and that the Complainant should have known that its case was fatally weak, especially given the fact it was a corporate entity represented by experienced counsel. 

On the RDNH claim, the Panel assessed whether the Complaint constituted an abuse of the administrative proceedings under paragraph 15(e) of the UDRP Rules.  The Panel found that the Complainant had indeed engaged in RDNH because the Complaint was doomed to fail at the outset and the Complainant, especially if it was represented by legal counsel, should have appreciated this.  The Panel explained that it was evident that the Complainant had not fully appreciated the requirement to prove both registration and use in bad faith since the Complaint impliedly accepted that Domain Name had been registered by the Respondent in 2004.  In addition the Panel pointed out that the Complaint did not suggest that the Respondent was anticipating the coming into existence of the Complainant’s rights and that a passing familiarity with UDRP precedent on this issue was expected from parties represented by legal counsel.  The Panel further held that a modicum of additional research would have indicated that the Respondent himself had created and run a business by the name of “Streamline Servers”, well before 2009, and therefore had a bona fide basis for registration of the Domain Name.

The Panel explained that although the relatively recent screenshot could have suggested that the Respondent had potentially, at one point, targeted the Complainant’s rights by forwarding traffic on an affiliate link to one of the Complainant’s competitors, such use did not justify the Complainant’s omission of the fact that the Domain Name predated its rights, its existence and its predecessors’ existence by a considerable margin.

The Panel further noted that the Complainant should have considered the fact that the distinctiveness of its trade mark was due in part to its stylisation, and that the Domain Name contained dictionary words which were at least partially descriptive of a hosting business.  The fact that the word “servers” was disclaimed in the Complainant’s United States trade mark registration raised the reasonable possibility that another entity might have come by the term “streamline servers” on an independent basis, and without necessarily having any knowledge of or intent to target the Complainant or its rights.

Comment

This decision shows the importance of diligently reviewing the UDRP requirements prior to commencing UDRP proceedings, as even where a complainant is in good faith, any clear disregard of the elements required under paragraph 4(a) could lead to a finding of RDNH, especially if the complainant is represented by legal counsel.

The decision is available here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Hogan Lovells | Attorney Advertising

Written by:

Hogan Lovells
Contact
more
less

Hogan Lovells on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.