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UDRP case law review – Short domain names equals increased burden of proof

November 20, 2017

The UDRP proceeding was been created to allow trademark owners to recover domain names identical or similar to said trademarks, registered and used in bad faith by persons or companies who lack legitimate interest in the domain name in question.

Recent UDRP decisions remind us that things become more difficult for trademark owners when their trademarks are short word marks or formed by acronyms of three letters or less.

A decision of November 6, 2017 concerning the domain name kf.org reminds us that trademark rights must cover the acronym in itself in order to be opposed to a domain name formed by the same letters combination.

Even if those rights are established, the bad faith of a domain name registrant will be harder to demonstrate. In a decision of October 30, 2017 on pco.com, the Panelist rejected the -classic- argument of the trademark owner regarding the reputation of its trademark for two reasons: the letters combination was considered common and the trademark owner failed to effectively demonstrate well-known status. In this context, the trademark owner also failed to demonstrate the bad faith of the domain name registrant and the transfer of the domain name was denied.

Absence of response from the domain name registrant undeniably helps the trademark owner as the Panelist will base his decision solely on the Complainant’s contentions. In a recent decision on imi.com, the holder of a trademark for IMI stressed the elements of the case in its favor and managed to obtain a positive decision “by default”. As Andrew Allemann underlines it in his article on domainnamewire.com however, the domain name registrant had also arguments and could have possibly responded successfully to the complaint.

It would be wrong, however, to rely too much on a respondent default: the [pco.com] decision (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-1778) reminds us that absence of response from a .com registrant does not automatically result in a transfer decision for the trademark owner.

These three decisions remind us that a UDRP complaint targeting an arbitrary but short domain name neccessitates a heavier burden of proof for the Trademark Holder who wishes to recover the domain name.

The IP Twins team remains available for any further information you may wish.

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