201806.06

UDRP: the Boomerang Effect of the Response

The Uniform Dispute Resolution Policy (UDRP) procedure to obtain the transfer of a domain name is a straightforward proceeding, within which the evidentiary requirement is rather low. To obtain a favorable decision, the Complainant must satisfy three conditions:
  • the domain name must be identical or similar to a trademark to which the Complainant has rights;
  • the owner must have no right or legitimate interest in the domain name;
  • the domain name must have been registered and must be used in bad faith.
These elements are the subject of settled case law and established doctrine: the Panel must decide on the sole basis of the evidence presented, and the burden is on the Respondent to refute the Complainant’s arguments.
In most cases, the cybersquatters do not bother to respond to complaints, and thus trademark holders are most often tempted to initiate proceedings against domain names which are identical or similar to their trademarks, without further assessing the other two remaining conditions for the filing of a complaint.
This lack of groundwork may be detrimental to the success of a UDRP complaint.
In a very recent case, the WIPO Arbitration Centre denied the request to transfer the domain name nutrihome.com to the owner of the trademarks NUTRIHOME and NUTRI-HOME.
The Complainant argued that the domain name was identical to its earlier trademarks, and that the Respondent lacked any rights or legitimate interests in the domain name, insofar as the latter holds no corresponding trademark or title on that name. As regards bad faith, the Complainant contended that there was a presumption of bad faith registration in the absence of a right or legitimate interest, and that the Respondent registered the domain for the sole purpose of selling it to the owner of the corresponding trademark.
In its Response, the Respondent reported several interesting elements.
It stated that its business includes the lawful registration of non-infringing internet domain names, indeed to offer them for sale. The disputed domain name, composed of the combination of the term “nutri”, being an abbreviation of “nutrition”, and the generic word “home”, falls into that category, just like the domains nutri-shop.com or nutriconcept.com which the Respondent also owns.
Moreover, the Respondent denies that the prefix “nutri” is exclusively associated with the Complainant, and lists several NUTRIHOME trademarks owned by third parties as well as third party uses of terms such as “Nutrisystem”, “Nutri-supplements” and “Nutri-health”.
Finally, the Canada-based Respondent contends that, at the time of registration, it had no knowledge of the trademarks of the Complainant, which activities were mainly focused on Argentina and Latin America at the time.
In this case, the Panel followed the Respondent’s argument. While the domain name in indeed identical to the Complainant’s earlier trademarks, there is no evidence that the Respondent had knowledge of the Complainant’s marks at the time of registration of the domain name, nor that it had the intention of taking unfair advantage of the goodwill attached to such trademark.
The registration of domain names composed of generic terms is a legitimate business, hence the Respondent did not lack any legitimate interests at the time of the registration of the disputed domain name.
The three conditions under the UDRP policy, being cumulative, the Panel did not even assert the bad faith element and denied the Complaint in full.
This case clearly illustrates that the conditions of a UDRP complaint, although rather simple, they must be cautiously thought through, especially because a Response from the owner can have a lasting impact on the Complainant. It is safe to say that in the absence of a response, the decision could have been different since the Panel decides solely on the grounds of the elements provided.
At IP Twins, our account managers are all IP lawyers and specialize in online brand protection matter. We can assist you in cybersquatting cases, to define a recovery strategy, assert the stakes and consequences and represent you before all arbitration centres. Please do not hesitate to contact us for any information.