What are the suggested modifications to the UDRP?

Written by Dreyfus06/07/2021

Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

Why is claiming unregistered trademark rights over a geographical name a difficult challenge in UDRP proceedings?

Written by Dreyfus22/04/2021

UDRP Proceedings While certain geographical names may, by exception, benefit from protection within the meaning of the UDRP rules, it should be remembered that they must be perceived as a trademark or service mark over which the applicant has rights. However, the mere use of a geographical name to identify certain goods and services as a territorial entity is not sufficient to demonstrate rights in a trademark or service mark within the meaning of the Guidelines, as the pannelist rightly pointed out in the present Decision.

In this case, the geographical name Solothurn (‘Soleure’ in French), corresponding to a city in Switzerland, was reproduced in its entirety in the domain name <solothurn.com>. It was registered in 1997 and has not been used since except to redirect to a “pay-per-click” page.

The applicants, the City of Solothurn and two associations under Swiss law promoting mainly tourism and unsurprisingly showing a strong interest in the domain name <solothurn.com>, claimed an unregistered trademark right on the sign “Solothurn”, which has been used extensively over the years. They also claimed protection of the name as “trademark-like” within the meaning of the Swiss law on unfair competition.

In this regard, they provided several documents attesting to the use of this geographical name by tourists since 1890 and its recognition as such. The applicants inferred that the use of the sign “Solothurn” constituted a trademark used to identify tourism and other related services. They also cited several decisions of the centre concerning geographical names, which are far from having argued in their favour.

The defendant, domiciled in the United States and known for his activities related to domains specializing in “geographical” domain names, had put the domain name <solothurn.com> up for sale. The defendant cited numerous decisions on how geographical names should be assessed (including a decision about the name <rouen.com>) and on the need to fulfill the function of a trade-mark.

Faced with this case and the question of whether the applicants could validly claim an unregistered trademark right in the name “Solothurn”, the panellists carried out a meticulous examination of the case law of the decisions of the WIPO panellists (overview) in the field of geographical names.

In particular, they recalled that according to the overview, “geographical terms used only in their ordinary geographical sense, except when registered as trademarks, do not, as such, provide standing to act in UDRP proceedings“. They also noted that in UDRP matters, it has generally been difficult for affiliates or entities responsible for a geographical territory to demonstrate trademark rights over that geographical name. However, the panellists noted that the decisions cited by the applicants all acknowledged that the geographical name was used in a purely descriptive way of a geographical location and not as a trademark.

On the other hand, they took note of the fact that some panellists have indicated that an unregistered trademark right in a geographical name may be granted to an official authority in exceptional circumstances. The circumstances in question cover the increasingly rare assumption that the geographical name would be used in connection with products and services but without any connection to the geographical location to which it corresponds. The idea is that the trade name should not generate an association with a geographical location in the minds of consumers, but rather an association with products and services, as the main function of the brand requires. For example, we can mention the products of the Ushuaïa brand, unrelated to Tierra del Fuego.

In the present case, the panellists noted that the applicants had not provided any proof of use of the name “Solothurn” in connection with products and services beyond those provided by the City of Switzerland. On the contrary, the applicants merely pointed out the use of the name “Solothurn” in connection with the name of the city of Switzerland and the tourist activities offered there. Consequently, the panellists could not validly conclude that the applicants had established that they had rights in the unregistered Solothurn trademark.

The panelist added that the applicants could not rely on the protection of this name as “trademark-like” within the meaning of the Swiss law on unfair competition insofar as Article 4.a. (i) of the Guidelines expressly refers to the “trade or service mark“.

Finally, the complaint was rejected as the applicants had not provided proof of trademark rights. However, this decision seems to be qualified by the panellists, who point out that it is a decision rendered under the UDRP principles, adapted to disputes between registrants and trademark owners whereas the solution could have been different under Swiss law and in matters of unfair competition.

The “morality” of this decision is not new; the UDRP procedure is not suitable for all disputes involving domain names and should not be systematically preferred to legal proceedings, even if it does have the advantage of being faster and less costly.

Bringing a lawsuit does not necessarily preclude the UDRP procedure.

Written by Dreyfus05/08/2020

Usually, when a legal action is brought in the margins of the UDRP proceeding, the experts refrain from any decision on the merits and invite the Parties to settle their dispute before the court. However, whether or not to make a decision on the merits is left to the discretion of the expert.

Here, the dispute is between Associated Newspapers Limited from the United Kingdom on the one hand, and a natural person from Pakistan, Mr Makhdoom Babar, on the other. Associated Newspapers, the applicant, publishes the Daily Mail and The Mail newspapers. The Applicant claims that in November 2019, each issue of the Daily Mail sold more than one million copies.

The Respondent, Mr. Babar reserved the domain name <dailymailpk.com> on February 22, 2019.

The latter has repeatedly requested an extension of the time limit to file a response to the complaint, referring to the Covid-19pandemic as a justification for this request. Finally, the Respondent did not file a submission on the merits but indicated that it had filed a lawsuit in Pakistan to block the UDRP proceeding. He provided a document mentioning the complaint and indicated that the next hearing would take place on May 22, 2020.

The expert points out that they has the power to either stop the UDRP proceeding or not, when there exists a legal action in relation to the domain name at stake. The expert mentioned that many Panels in this situation refuse to suspend or terminate the procedure to avoid an indefinite delay in the decision. Especially when the legal action was introduced after the UDRP procedure, with the aim of disturbing it.

Following these preliminary remarks, the expert notes that there is no guarantee that the legal action will resolve the domain name issue. In fact, there is nothing in the file to show that the defendants in the legal action have been served with it or that they have agreed to submit to the jurisdiction in question. Furthermore, the court has not taken any action following the alleged hearing on May 22, 2020.

In addition, the action has not been brought to court in Massachusetts, United States, where the Registry Office is located. Thus, the Registrar may not enforce the decision in Pakistan.

Therefore, the expert decides to rule on the complaint and orders the transfer of the domain name to the applicant. To do so, he takes several elements into account. Firstly, the Complainant and the Respondent have already crossed paths in the past, since the Complainant had filed a complaint against them, concerning the domain name <dailymailnews.com>.

Secondly, the site set up by the Respondent on the name <dailymailpk.com> bears strong resemblances to that of the Complainant, to the extent that it cannot be a matter of coincidence alone, but rather of a desire to attract Internet users to its site by suggesting an affiliation with that of the Complainant. Thirdly, no articles have been published on the site since February 24, 2020, the date when the applicant was notified of the complaint. Finally, the expert notes that, in view of the circumstances, the defendant could not have been unaware of the existence of the “DAILY MAIL” trademark, which enjoys a great reputation.

Thus, the legal action does not per se obstruct the UDRP procedure. Nevertheless, it should be noted that in this case the defendant was a proven cybersquatter, at the origin of the legal action, initiated after the filing of the UDRP Complaint and in order to obstruct this procedure. Experts tend to react differently when the legal action precedes the UDRP action and especially when the dispute is between former trading partners. It is therefore necessary to remain vigilant before opting for the UDRP course of action.

UDRP procedure. The bad faith complainant: when the chances of success are so low that the applicant should not have taken action

Written by Dreyfus11/05/2020

Source: WIPO, Arbitration and Mediation Center, Jan. 30, 2020, No. D2019-2937, Scalpers Fashion, S.L. c/ Dreamissary Hostmaster

The Spanish company Scalpers Fashion is active in the fashion industry. It is the owner of numerous trademarks incorporating the “Scalpers” sign, including the European Union trademark “Scalpers” No. 6748578, registered on September 29, 2008. The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <scalpers.com>, claiming that it infringes its rights. The domain name was registered on September 15, 1997, by the Respondent Dreamissary Hostmaster, who is in fact a natural person, a U.S. citizen and the holder of a substantial number of domain names featuring dictionary words. The domain name at issue was exploited to generate pay-per-click revenues by leading to sponsored links referring to the sale of tickets. At the time the complaint was filed, the domain name in question resolved to a parking page.

The Complainant submits that the Respondent intends to take undue advantage of its reputation in fashion and to disrupt its business. In addition, the Complainant submits that the large sums proposed by the Respondent in various attempts t negotiate are evidence of his bad faith. Indeed, the Respondent allegedly offered initially $150,000 and then $195,000. Finally, the Complainant considers that the Respondent’s bad faith is manifested by the registration of more than 100 domain names, for him to be able to resell them for a profit.

The Respondent contends that he registered and used the domain name <scalpers.com> because of the definition of the word “scalper”: a person who buys tickets at the normal price and then resells them at a high price when demand is high and available seats are scarce. In addition, the latter requires the expert to conclude to reverse domain name hijacking.

The Complainant’s position was not followed by the expert. The expert considers that the domain name was neither registered nor used in bad faith. Indeed, the Respondent had registered the domain name more than 10 years before the Complainant’s alleged date of first use of the “Scalpers” trademark. In such circumstances, there was no basis to conclude that the Respondent targeted the Complainant’s mark, which was not in existence at the time the Respondent registered the disputed domain name. As regards the use of ???, the expert also concluded that there was no bad faith, since the Respondent had used the domain name for the meaning of the word “scalpers”. The expert ruling on the case indicates that the complaint should be dismissed. In addition, he stated that the complaint was filed in bad faith by the Complainant, and was intended to deprive the Respondent of ownership of his domain name. Indeed, several facts contribute to the expert’s position: the domain name was registered by the Respondent long before the Complainant owned a trademark right in the Scalpers sign; the UDRP Complaint was filed after two unsuccessful attempts to purchase the domain name from the Respondent; and the Respondent’s counsel notified the Complainant that the complaint should be withdrawn due to the manifest impossibility of establishing bad faith.

The Complainant clearly should have known that the complaint could not succeed. Thus, it should be borne in mind that the UDRP procedure is not a one-way tool. The aggrieved Respondent may attempt to reverse the proceedings to obtain a decision against the Complainant. Here, the lack of chance of success was particularly blatant, as the domain name predates the trademark rights of Scalpers Fashion.

Domain name registration by an unauthorized distributor: importance of the trademark holder’s behavior in assessing good faith

Written by Dreyfus10/04/2020

The French company Adventure is specialized in the sale of paramotors. It owns the French semi-figurative trademark including the terms “adventure” and “paramotor” as well as the domain names “paramoteur.com” and “adventure-paramotors.com”.

The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <adventureparamotorsusa.com>, claiming that it infringes its rights.

The domain name was registered on March 14, 2018, by respondent Mike Robinson who acted as the Complainant’s authorized reseller for the United States. The domain name offered the Complainant’s products and services for sale. Due to the low level of sales generated by the Respondent in the United States, the Complainant decided to terminate the dealership agreement and instructed the Respondent to stop using the domain name <adventureparamotorsusa.com>.

The dispute between the parties arises as a result of the Respondent’s refusal to comply with this request. Indeed, the latter is ready to close the website on the condition that the complainant pays him $10,000, a sum that would represent the investment made by the Respondent for the construction of the website.

The French company maintains that the website associated with the disputed domain name was created by the Respondent without the prior express authorization of the Complainant.

The Complainant’s position is not supported by the expert, who considers that it fails to demonstrate that the Respondent registered and used the domain name in bad faith. The expert states: “the domain name was registered on March 14, 2018, the month the parties entered into their commercial agreement. It is also the month when the parties met to discuss the agreement (…). The panel assumes that the parties must have discussed during that March 2018 meeting the means by which the Respondent planned to promote the Complainant’s products in the United States (…). After all, the plaintiff must have known that the defendant would have an online presence and, usually trademark owners are concerned about whether these marketing elements (…) are in line with the image of the trademark. Similarly, the expert notes that “in none of the exchanges (…) between the parties during the term of the agreement did the Complainant argue about the registration of the domain name by the Respondent”.

The various exchanges between the protagonists show that the Complainant’s only reproach to the Respondent is that the latter continued using the domain name after the termination of the Concession Agreement, and not the registration of the domain name per se. Therefore, the Complainant does not prove in any way that the domain name was registered in bad faith. According to the expert and in view of the content of the exchanges between the parties, the Respondent did register the domain name in good faith for the purpose of promoting and selling the Complainant’s products under its trade agreement.

The expert ruling on the case concludes that the complaint should be dismissed.

In addition, he also states that the complaint was filed in bad faith by the Complainant, seeking to deprive the Respondent of ownership of its domain name.

Indeed, the UDRP procedure is not a tool for deliberately depriving a respondent of a domain name in circumstances that are outside the policy of the procedure.

In regards to the facts of the case, the Complainant clearly should have known that its complaint could not succeed since the respondent had registered the domain name in good faith.

Thus, great care must be taken with regard to the portfolio of domain names related to the company name or trademarks, as these are valuable assets. Drawing up a restrictive naming charter makes it possible to prevent as far as possible any dispute regarding the ownership of names that may arise with business partners.

Dreyfus firm, an expert in trademark law, can help you with the management of your domain names and trademarks portfolios.

UDRP Procedure: abuse of right or, when the complaint is brought in bad faith

Written by Dreyfus09/04/2020

Advice Group is an Italian company founded in 2006 and specialized in marketing. It is based in Turin but has offices in Rome, Bari and subsidiaries in Bulgaria, Kosovo, Portugal, Colombia and Peru.

Having noted the registration of the domain name <advicegroup.com> by a third party, the company turns to the WIPO Arbitration and Mediation Center for its transfer. The domain name was reserved in 2014 by Michele Dionia of Macrosten LTD, located in Cyprus. The domain name resolves to a page of commercial links and suggests that the name may be for sale (Internet users can make an offer).

The Respondent did not respond to the complaint.

The expert acknowledges the likelihood of confusion between the disputed domain name and the applicant’s Italian semi-figurative trademark, “A Advice Progressive Marketing Thinking”.

However, he decides not to rule on the issue of legitimate interest, referring to his observations on the issue of bad faith. Nevertheless, he makes several observations on the legitimate interest, in favor of the Respondent: the terms that make up the domain name are generic and the Respondent did not make active use of the name, he simply let the registrar promote its services and included a message advising Internet users to contact the registrant for the purchase of the name.

The expert also obviously did some research on his part, which he is not bound to do, since he notes that there are many companies called Advice Group throughout the world.

Concerning bad faith, the expert insists on the fact that at the time of the registration of the name, the applicant had not yet registered a trademark. The filing took place nine months after the reservation of the name in question and the obtaining of rights, two years later! Nothing suggests that the Respondent had the Complainant in mind when registering this domain name consisting of dictionary terms. Moreover, the fact that Internet users could propose the purchase of the name does not mean that the aim of Macrosten LTD was to resell it at a high price to Advice Group.

Thus, not only is the complaint rejected, but the expert also decides to qualify the complaint as a case of “reverse domain name hijacking”, i.e. it is considered that the complaint was filed with the sole purpose of depriving the domain name holder of the domain name. Here, the Complainant accused the Respondent of cybersquatting even though no evidence to that effect was provided and the name, consisting of generic terms, predates the Complainant’s trademark registration.

It should be remembered that proving the bad faith of a registrant when the domain name consists of generic terms is difficult. It is essential to show that the registrant had the applicant’s trademark in mind. In the present case, it can be assumed that even if the Complainant’s trademark had been older, this would not have been sufficient to ensure the success of the complaint. The setting up of a site similar to that of the Complainant or for the same activities, or contact made by the registrant are elements that make possible to constitute a relevant case . Here, the Complainant had no evidence to justify his position.

Dreyfus firm, an expert in trademark law, can help you by offering you unique online trademark management services.

UDRP procedure: impossibility for a trademark owner to request the transfer of a domain name after its sale

Written by Dreyfus08/04/2020

The Swiss company Blockwords AG, formerly known as Swiss Future Project AG, operates an encryption exchange under the sign SCX, which was registered as a Swiss trademark on December 19, 2017.

The company has filed a UDRP complaint with the WIPO Arbitration and Mediation Center for the transfer of the domain name <scx.ch>, alleging, among other things, that it infringes its trademark rights.

This domain name was registered on April 23, 2001 and acquired by the Swiss company in March 2018. In March 2019, the name was transferred to the company SwissClass Trade AG, which subsequently sold it to the Respondent in the same month for more than EUR 60,000.

The Swiss company claims that a fraud was committed when the domain name <scx.ch> was transferred to SwissClass Trade AG due to the absence of two signatures from Blockworks AG which would have made the transfer legal.

In addition, it considers that the transfer of the domain name is the result of a mismanagement on the part of a former member of the board of directors. Ultimately, the complainant fears misuse of the domain name by the Respondent although the latter has not changed the services offered on the website in question, which remain those of the Complainant.

The Respondent explains that it is incomprehensible that the Complainant would want to recover the domain name. Indeed, the Complainant sold the domain name to SwissClass Trade AG, which was free to resell it to the Respondent at a later date. Therefore, the Respondent believes that it was not at fault and that the issue is between the Complainant’s management and SwissClass Trade AG and not between the Complainant and the Respondent.

The Complainant’s position is not supported by the expert who believes that there was no fraud in the sale and transfer of the domain name to SwissClass Trade AG since the sale was signed by two legal representatives of the Complainant’s company. Therefore, the applicant cannot both sell its domain name and subsequently request its transfer. Furthermore, the expert did not accept the argument of mismanagement by one of the former members of the company’s board of directors, due to insufficient evidence.

The expert acknowledges, however, that the situation raises some questions: why did the Respondent purchase this domain name for more than 60,000 euros and what was its intention, even though it could immediately see that the name referred to a third party’s site?

The expert concludes that the complaint should be rejected. Due to the complex facts of the case, he is of the opinion that a judicial procedure would be more appropriate to gather the various pieces of evidence and to rule on them.

This scenario once again illustrates two problems. The first concerns the internal management of domain names: optimal security must always be ensured so that there is no risk of losing control of the names. The second issue related to the fact that UDRP is not an appropriate forum for all disputes. In the present case, it seemed clearly impossible to resolve the dispute between the parties without ruling both on the relationship between Blockwords AG and SwissClasse Trade AG and between Swiss Classe Trade AG and the Respondent.

UDRP