Why does the willingness to sell a domain name is not conditioned on an active approach?

Written by Dreyfus18/05/2021

(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

How to protect your brands in the digital era?

Written by Dreyfus26/04/2021

“Intellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

What happens to the domain name reserved by the franchisee once the contractual relations have been broken?

Written by Dreyfus20/04/2021

One of the key elements of the franchise is the authorisation given by the franchisor to the franchise to exploit its trademark. In such contracts, it is key to define precisely the terms of use.

Century 21 Real Estate LLC (“Century 21”) is a renowned real estate company, founded in 1971 and managing 8000 franchised agencies in 80 countries. In particular, it owns the trademark C21, protected in Montenegro.

Century 21 filed a complaint before the WIPO Arbitration and Mediation Center to obtain the transfer of the domain name <c21fresh.me> registered on November 14, 2012 by Lika Ivanoc, which belongs to the Fresh d.o.o. company in Montenegro, also specialized in real estate.

Century 21 asserts that in the past the Respondent has been a member of its network of franchisees but that this is no longer the case. Realogy Group LLC, another parent company of Century 21, was reported to have entered into an agreement with a Serbian company, Real Estate d.o.o.

According to this agreement, which the Complainant does not provide, Real Estate d.o.o was authorized to use the trademarks of Century 21 and to enter into sub-franchises.

This agreement would have expired in 2014.

The Complainant explains that in 2015, the parent company of the Respondent, Century 21 Fresh Real Estate, was notified of the end of the contract of franchise. The letter stated that Century 21 did not know if Century 21 Fresh Real Estate was commercially connected to Real Estate d.o.o.

In the absence of any response, Century 21 filed a complaint to the Montenegrin Trade Inspection, and after that, Century 21 Fresh Real Estate has been ordered to withdraw the trademark from the photographs published on the web site www.realitica.com.

The above situation is quite complex.

To begin with, the Respondent did not reply to the complaint, which would have eventually clarified the situation and the possible links, even the indirect ones, between the Complainant and the Respondent.

The expert acknowledges the similarity between the domain name <c21fresh.me> and the C21 trademark. However, he does not issue commentaries on the legitimate interest of the registrant and directly moves on to rule on the question of registration in bad faith.

He notes that if the Complainant clearly indicates that the Respondent was part of its franchisees network, it also had a letter sent to the Respondent’s parent company, suggesting that it was not sure that the Respondent was actually part of this network.

It might be surprising how little control Century 21 has over its network of franchisees and sub-franchisees. However, the name of the Respondent’s parent company appeared on the site of one of the franchises of the Complainant, which suggests that the Respondent was indeed a member of the franchise network.

The expert notices that during the course of this agreement Real Estate d.o.o. and the sub-franchisees had the authorization to use the trademarks of Century 21. Thus, the domain name has certainly been registered within this framework. Unless a clear clause in the contract prohibits to register domain names, it is difficult to consider that the domain name has been registered in bad faith in 2012.

The experts relies on a previous case, Elders Limited v. Private Company, No. D2007-1099, in which the expert concluded that the name registered by the franchisee was part of its activity even without the franchisor’s express authorisation. In the absence of evidence of other motivations that might have pushed the Respondent to register the domain name, the registration was considered to be in good faith.

The question then arises as to whether the renewal of the domain name <c21fresh.me> after the end of the contract of franchise can define a new starting point for the criterion of registration in bad faith. Referring to the WIPO Overview 3.0, the expert indicates that the simple renewal of the domain name cannot qualify a bad faith registration. Consequently, the complaint is rejected.

This decision shows that it is always preferable, for a company, to be the owner of the domain names used by its partners, such as franchisees, even if the latter are the ones exploiting them. At the very least, drafting a contractual provision is essential, specifying the way in which the trademarks of the franchise can be operated and if such use includes the registration of domain names, under which conditions, which charter to respect and when these names must be returned. The same problem can arise for social media accounts.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Source: WIPO, Arbitration and Mediation Center, Nov. 9, 2020, Case D2020-0008, Century 21 Real Estate LLC v. Luka Ivanoc, Fresh Realestate

International Trademark: Islamic Republic of Pakistan joins the Madrid System

Written by Dreyfus09/03/2021

As of May 24, 2021, the Madrid System will officially welcome its 108th member: the Islamic Republic of Pakistan.

On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid System with the Director General of the World Intellectual Property Office (WIPO). The arrival of this new member brings the number of countries covered by the Madrid System to 124, and highlights the importance of this international system for the filing and registration of Trademarks.

The Madrid System provides a practical and cost-effective solution for the registration and management of trademarks worldwide. More than 1.5 million international trademarks have been registered since its creation in 1891. While the system has been in place for more than 125 years, three quarters of its member countries have joined it in the last three decades. After the recent accessions of Canada, Samoa, Thailand, and the Sultanate of Brunei, it is now up to Pakistan to join the protocol.

Pakistan’s adhesion to the Madrid Protocol enables the harmonization of Pakistani trademark law at the international level. With the filing of a single international Trademark application, Pakistani applicants now have the possibility to apply for protection in 124 countries. Likewise, Pakistan can be designated by applications from any state party to the Madrid system and international Trademark owners can easily extend their protection in the Pakistani market.

The international trademark system is a major asset for the registration of your trademarks abroad at a lower cost.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Unfair competition: a doomed market place

Written by Dreyfus24/02/2021

On November 20, 2020, the Court of Appeal of Paris, condemned Webedia, a company specialised in the management of Internet sites, for unfair competition towards the Bonpoint company.

Bonpoint is specialized in the manufacture and sale of high-end children’s clothing, marketing its discontinued products through online retailers of multi-brand clothing, including Yoox.com.

The Webedia company, for its part, run the marketplace shopoon.fr which is a guide for buying fashion and decoration items online putting Internet users in touch with e-commerce merchant sites. In particular, it offers products appearing on the site yoox.com.

So far so good. However, the Bonpoint company has found that 93% of the products of its brand displayed on the site shopoon.fr are unavailable for sale, and when the user clicks on these unavailable products, he is redirected to similar and competing products belonging to other brands.

The Court of Appeal of Paris considered that the presentation of products on the site shopoon.fr allowed the consumer to clearly distinguish available items from unavailable items. Consequently, this presentation was not likely to substantially alter the economic behavior of the normally informed and reasonably attentive consumer who, in case of unavailability of the desired branded product, would turn to articles of another brand.

Therefore, the Court ruled that Webedia had not committed deceptive marketing practices.

However, the Court reminds that if the Webedia company does not sell directly the articles which it presents on its site, it is nevertheless remunerated as soon as it puts forward the products of different sites and brands, in the event of unavailability of the initially sought-after product. It thus draws a financial advantage from the redirection of web users to these products.

Consequently, the judges held on this point that the Webedia company was guilty of unfair competition, by presenting on the site shopoon.fr 93% of articles of the Bonpoint company which it knew unavailable, and by “referring the web user to the possibility of seeing similar competing products“. They considered that the Webedia company had thus used the attraction force of the Bonpoint brand to generate traffic of web users oriented towards other products.

The Court thus ordered Webedia to pay Bonpoint the sum of 22,043 euros in damages, including 20,000 euros in compensation for moral prejudice and 2,043 euros for misappropriation of customers.

Filing a trademark on behalf of a company in the process of creation: who may bring a trademark infringement action?

Written by Dreyfus22/02/2021

It is common for trademarks to be filed by individuals acting on behalf of a company in the process of creation.

The founder of the company is then the regular owner of the trademark until the company in question takes over the filing. Therefore, the founder may initiate proceedings, in the meantime, in case of trademark infringement.

But what happens if the company that was supposed to be created and, therefore, become the owner of the trademark, is never formed?

The French Supreme Court expressed its view in a decision dated October 14, 2020. Ms. T, who had registered the trademark “Dousè Péyi” in the name of the company in the process of being created Dousè Péyi, filed a lawsuit against the company Sérénade des saveurs (Cass. Comm. 14 Oct. 2020, No. 18-23-965 T.c/ Sté Sérénade des saveurs).

The dispute concerned the filing of the trademark “Doucè Péyi”, almost identical to the earlier trademark.

Following this application, Ms. T sued Sérénade des saveurs for trademark infringement and unfair competition. The applicant raised a motion to dismiss the action, based on the lack of interest of the founder of the company to act in defence of a trademark registered on behalf of a company which was not yet created (see Article 31 of the French Code of Civil Procedure).

The company Sérénade des Saveurs claimed that Ms. T did not personally own the trademark. According to the defendant, since the company had never been created, Mrs. T should have recorded the change of ownership of the trademark at the INPI.

The first judges declared Ms. T’s action for infringement inadmissible for lack of interest in acting. The Court of Appeal confirmed this decision and stated that Ms. T “cannot claim ownership of this trademark in a personal capacity without having [recorded the change of ownership] on the National Trademark Register before initiating any action reserved to the owner of the trademark”. Otherwise, the change is unenforceable and any action in defence of the mark is therefore inadmissible.

Ms. T appealed to the Supreme Court and, rightly so, since the Commercial Chamber of the Court of Cassation ruled that the Court of Appeal had violated Article L210-6, paragraph 2, of the French Commercial Code, which establishes a system of taking over acts performed on behalf of a company in the process of creation: “every person who acted on behalf of a company in the process of creation before it acquired legal personality shall be held jointly and indefinitely liable for the acts thus performed, unless the company, after having been duly formed and registered, takes over the commitments entered into. Such commitments are then deemed to have been entered into from the outset by the company”.

The Supreme Court overturned the appeal decision and affirmed that in the absence of legal personality, the founder of the company, who registered the trademark, is the owner of the trademark and therefore Ms. T could rightly file a trademark infringement suit.

This solution guarantees the legal security of project leaders. The creation of a company can, in fact, take time. During this time, several acts must be accomplished and the law acknowledges their retroactive effect.

Filing a trademark in the name of a company in the process of creation is an interesting practice to enhance the value of the trademark assets and protect them against third parties that may file a similar or identical trademark while the company is not yet formed.

However, case law in this area is not consistent and requires to be attentive to details when filing a trademark.

In order for the company to automatically become the owner of the trademark at the time of its registration, a statement of the acts performed on behalf of the company while it being created should be made, which will be annexed to the articles of association, and should mention the filing of the trademark, indicating that the company takes over the legal act of filing on its behalf.

Dreyfus can assist you with the management of your trademarks portfolios in all countries around the world. Please feel free to contact us.

The creation of a data access system Whois by ICANN

Written by Dreyfus27/01/2021

Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.

ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.

This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.

Source: LexisNexis, N°1 (January 2021)

Domain names in <.suck> : between attack to brand image and freedom of expression

Written by Dreyfus26/01/2021

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains

Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

The opportunity to add a registered domain name to the complaint after the filing

Written by Dreyfus22/01/2021

If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.

On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.

In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;

* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.

Thus, it seems possible to add a reserved name to a complaint after the filing.

Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.

All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.

In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.

Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.

The importance of taking care of the arguments within a complaint

Written by Dreyfus21/01/2021

Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.

In February 2020, the applicant allegedly asked one of its employees to proceed with the registration of the name <cobrajetaviation.com> on his behalf. The latter would thus have reserved the name using his personal credit card first, and being reimbursed by the applicant later. When the job contract ended, he would have refused to transfer to the applicant the information she needed in order to take control over the domain name and its related website. This is a very common dispute and, once again, it give us the chance to recall the importance of establishing naming charter within the company and the importance of assuring the respect of good practices: each domain name must be reserved by the company and with a generic e-mail address of type nomsdedomaine@entreprise.com.

Moreover, since this dispute involves a contractual dispute rather than a dispute over the on a classic case of cybersquatting, the expert rejects the complaint believing that it is for the courts to deal with this matter which “generates questions of contractual breaches, breaches of contract, breaches of fiduciary duties and potentially questions related to local labor laws”. The expert also said and pointed out that even if he could have known about the case on the merits, he would certainly have rejected the complaint, for two major reasons.

On the one hand, in order to prove its right on the trademark, the applicant has submitted the certified translation of a trademark application in Egypt, filed on January 26, 2020 and not yet registered. The expert also notes that a certified translation is not enough to determine who is the true owner of the trademark and that the copy of the original document was missing as wall.

On the other hand, the expert believes that the applicant’s arguments are insufficient to demonstrate the defendant’s bad faith. He did not gave proof of the instructions addressed to the employee; therefore, it is not possible to determine whether he or she has complied with them. However, the UDRP procedure involves proving both the registration and the use of the name in bad faith.

Therefore, it is necessary to ensure that the complaint has a chance to succeed within the framework of the UDRP action, that it does not go beyond its scope and prepare the argument and the most important thing is to provide evident proof of its trademark right; presenting the request for a trademark that does not confer any protection. It should be also noted that the applicant gave an insufficient presentation of herself within the complaint, at the point that the expert indicates that they “presume” that the applicant is active in the aviation sector.

Source: WIPO, Arbitration and Mediation Center, Nov. 5, 2020, aff. No. D2020-2024 Cobrajet, Inc. v. The Endurance International Group, Inc,

Trademark