Adventurism in Domain Name Disputes: To look before you leap!

The World Intellectual Property Organisation (WIPO) has been administering the Uniform Domain Name Disputes Resolution Policy (UDRP) through the WIPO Arbitration and Mediation Center and has been successfully administering disputes arising out of abusive domain name registrations mostly in generic top-level domains (gTLDs) and some country code top-level domains (ccTLDs). The Internet Corporation for Assigned Names and Numbers (ICANN) the internet’s domain name watchdog is the nodal body which adopted the UDRP Policy and the UDRP Rules and the WIPO Arbitration and Mediation Center is an accredited dispute resolution service provider. While the UDRP Policy has been a boon for trademark owners, it is not an exact science which some intellectual property practitioners, lawyers, complainants often mistake it for.

The Holy Trinity
The three boxes which a Complainant must not only tick but be able to establish to succeed under the UDRP Policy are as follows:-
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith

It is a sine qua non of the UDRP Policy that all the aforelisted conditions must be met conjunctively. As a practitioner one finds that overzealous complainants often seem to either miss or disregard the ‘conjunctive’ nature of these three rules, which form of the very backbone of the UDRP Policy. It may not be out of place to call them the ‘holy trinity’ of UDRP Policy. In this article, my aim is to bring to the attention of the readers, instances wherein complainants have failed to hold a candle to the ‘holy trinity’ and for the purpose I wish to draw your attention to some precedents from the WIPO Arbitration and Mediation Center touching up each facet of the said ‘holy trinity’ in disputes with facts which are out of the mundane.

Case Study 1
I first begin with the requirement of the disputed domain name being identical/deceptively similar with a trade mark/(s) of the Complainant and for the purpose refer to Helena Revoredo Delvecchio, Prosegur Compañía de Seguridad, SA c. Raquel Nieto Mena [Case No. D2018-0026]. The Complainant in this dispute was the President of the Spanish Company most popularly known as ‘Prosegur’ which is engaged in the business of providing private security since 1976 and has a global presence. The disputed domain name was <helenarevoredo.com> which was registered by the Respondent who was a member of the worker’s union of Prosegur. Prosegur or the Complainant did not own any registered trademark(s) or had use of the name HELENA REVOREDO as a trademark. The Panel most interestingly while deciding on the first issue of similarity, held that personal names that are not registered or protected by being used in trade as trademarks, that is, as identifiers of the business origin of products and / or services, are outside the protection scope of the Policy. Simply having a known or famous name, such as a businesswoman or board member of one or several companies, is not enough to prove the existence of a notorious registered trademark. The Panel acknowledged that it is only names of famous people such as movie stars, sports icons, politicians who have a degree of notoriety that can be a yardstick for judging the identity and/or similarity to that of a domain name complained of which was absent in the instant matter. The Panel also referred to its power to conduct a limited investigation of the facts of the case, while refusing the Complaint. One, therefore, finds that mere identity of a domain name with another personal name is not sufficient to meet the requirements of Para 4(a)(i) of the UDRP Policy

Case Study 2
Next, I move on to the second requirement of establishing that the Registrant does not have legitimate rights or interests in the domain name. It is not enough for the Complainant to establish that the disputed domain name is identical and/or deceptively similar to its trademark in which it has rights but also that the Registrant does not have rights or legitimate interests in respect of the disputed domain name. Therefore a Complainant must also first submit evidence of its own legitimate rights or interests in the trademark which is/are the basis of the Complaint and must also plead and establish how the Registrant does not have legitimate rights or interests in the disputed domain name. The priority of adoption and use, lack of intent on the part of the Registrant to use the domain name with ‘legitimate interests’ are some basic grounds. The Complainant must also be mindful of the fact that its own trademark rights must be prior and the rights should be able to prima facie stand the test of distinctiveness, exclusivity or even legitimacy before using them to its advantage. For the purpose, I refer to Majid Al Futtaim Properties LLC v. Solidere [Case No. D2018-0004]. The Panel, in this case, found that the Complainant’s claim of rights in it’s registered trade mark ‘Beirut City Centre’ and device and ‘City Centre’ to lack exclusivity as a)being a ‘device mark’ with no exclusive rights but as a whole and b) ‘City Centre’ to be plainly descriptive and which can have an extremely wide range of references that have nothing to do with the Complainant. It was moreover found, that the Complainant did not register its trademark until several years after the Respondent’s name had been adopted and the Respondent had commenced its reconstruction and development work and in these circumstances, the Panel was unable to find that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name.

Case Study 3
Lastly, I refer to the third and final requirement of establishing that the Registrant has registered and is using the domain name in bad faith. The third and the final requirement is the last hurdle which a Complainant must cross to succeed. It is again essential for the Complainant to argue and establish how its trade mark is being misused by the Registrant to take unfair advantage thereof or the use of the domain name amounts to an abuse of the Complainant’s rights in its trade mark so as to constitute bad faith. In fact Complainant’s must take caution that use of identical marks as domain names in fan sites, genuine, non-commercial criticism portals as well as websites dealing fairly with related goods/services do not by default come under the purview of bad faith registrations and use within the purview of the UDRP Policy.

The Panel in Maxym Polyakov V. Zhuhaiyingxunkejiyouxiangongsi / Nechiporenko Bogdan, Bogdan Nechiporenko in [Case No. D2018-0147] held that use of an identical domain name by the Respondent, which was made for criticism and use of the expression “unofficial” clearly indicated that the Respondent clearly wanted to prevent any confusion between the two domain names and that a bad faith claim based on allegations that the Respondent registered and used the disputed domain name in bad faith because his purpose was to defame the Complainant, is essentially outside the scope of the Policy. Although the Panel found that the Complainant had failed to prove that the disputed domain name was registered and used in bad faith within the meaning of the Policy, such finding should in no way be considered as preventing either of the Parties from seeking to pursue this matter through the courts. One must, therefore, weigh the odds and see if an efficacious and stronger remedy lies under the municipal law under the relevant jurisdiction in such cases before knocking on WIPO’s door. The Panel observed that of the Complainant alleges that the Respondent is posting defamatory content or is in violation of a criminal code there are likely to be alternative remedies and/or actions available to it.

Furthermore, before alleging bad faith, it is essential for the Complainant to establish that it has use of the trademark and the goodwill arising out of such use is being misused by the Registrant either to divert traffic, make unlawful gains and the use of the domain name, therefore, constituted bad faith. Merely holding the registration of a trademark is unlikely to suffice on this count. The Panel in Laboratoires Thea v. Tech Admin, Virtual Point Inc. [Case No. D2018-0039] observed that the case file lacks any clear indication that Respondent targeted Complainant’s trademark when registering the disputed domain name and that the Complainant did not submit any evidence or at least any information in relation to its factual use of its trademarks worldwide and as to why it is at least more likely than not that the Respondent specifically had Complainant in mind when registering the disputed domain name. The Panel observed that while UDRP panels agree that domainers undertaking automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names (see WIPO Overview 3.0, section 3.2.3), still a finding of bad faith under the UDRP requests Respondent to take unfair advantage of or abuse Complainant’s trademark. In the case at hand, Complainant has nothing brought forward as to why it was e.g., for the reputation of Complainant’s VIRGAN trademark; as this case turns on this point, it would have been expected for the Complainant to squarely address this matter. In this case, the Complainant was the registered owner of the mark VIRGAN since 1993, while the Respondent was using the domain name < www.virgan.com> after getting it registered in 2005.

CONCLUSION
This brings us to the conclusion that as a potential Complainant one must test his rights against the yardsticks set by the UDRP Policy and the precedents set by the Panels from time to time, weigh the pros & cons of invoking the UDRP Policy against the backdrop of the strength of its rights and the proposed allegations before invoking the Policy. Proceeding merely on the basis of an identical and/or similar domain name could well be counterproductive and be prejudicial to the Complainant’s rights and/or chances of success in future proceedings either before the WIPO Panel or before any other competent forum.

Debjyoti Sarkar

Having been a part of the firm for over 9 years, Mr. Sarkar handles large trademark portfolios for clients in sectors of engineering, healthcare, fast-moving consumer goods, food and beverages, clothing and footwear, among others. He advises on all aspects of trademark laws ranging from availability searches the pre-filing stages through trademark clearance phases, applications, prosecution, oppositions, cancellations, maintenance of registrations to other post-registration activities. He also advises on trademark licensing and assignments. Also dealing with contentious matters concerning our clients’ foreign trademarks’ portfolios, Mr Sarkar is actively involved in matters concerning passing off and infringement actions before the courts and domain name disputes before the World Intellectual Property Organization (WIPO) and the.IN Registry. He engages in enforcement actions before the Customs Office. He is also an active member of the Copyright team and advises Authors on their business dealings with film producers in so far as it deals with adaptation rights. He is currently chairing the MEASA Sub- Committee of INTA Legislation and Regulation Committee. He is a member of INTA and APAA.

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