Companies should ensure that domain names are registered using company's name

International

Complainant Cool-View LLC, a US limited liability company selling surgical lighting, has lost a case filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) in relation to the domain name ‘cool-view.com’. The domain name was registered on September 3 2006 by the respondent, Dave Medinis, inventor and founder of the complainant. A single-member panel ruled that the respondent was allowed to retain ownership of the domain name on the basis that there had been no bad-faith registration and use, as required for a transfer under the UDRP.

The respondent was one of the initial members/founders of the complainant and had assigned the COOL-VIEW mark, registered on April 19 2011, to the complainant. After a dispute between the parties over allegations that the respondent was selling the complainant's products through competing channels, the complainant replaced the respondent as manager in 2011. However, the domain name was still used to point to the complainant's website selling only the products invented by the respondent and sold by the complainant.

The complainant stated that it intended to file a lawsuit to obtain all company assets in the respondent's possession, although, at the time that the case was filed, there was no pending litigation concerning the domain name.

To be successful in a complaint under the UDRP, a complainant must evidence that:

  • the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • the respondent has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.

The panel was satisfied that the complainant had established the first requirement. The panel stated that it was undisputable that the respondent had assigned all his interests in the COOL-VIEW mark to the complainant, and that the domain name was identical to this mark.

The panel considered that there was no reason to examine the second prong of the UDRP, since the complainant had failed to fulfil the third requirement.

Turning to the third requirement of the UDRP, the panel examined the issue of bad-faith registration and use. The complainant argued that the respondent was using the domain name to mislead internet users for commercial gain. However, the panel ruled that there was no evidence that the respondent had used the domain name for anything other than to point to the complainant's website - he had not used the domain name to point potential customers to a competing website. The panel pointed out that, under the UDRP, evidence of both bad-faith registration and use was required, and cited the case of Mile Inc v Burg (Case D2010-2011), in which the panel stated that "the complaint must establish that the respondent registered the domain name with the intent of exploiting or damaging the complainant's mark".  

In this case, however, neither the complainant nor the trademark was in existence at the time of registration of the domain name, thus ruling out bad-faith registration; moreover, bad-faith use had not been demonstrated, as the respondent had used the domain name only for the benefit of the complainant. Thus, without persuasive evidence that the respondent intended from the outset to eventually use the domain name to divert customers from the complainant, or to sell the domain name to the complainant for an excessive price, the panel declined to find bad-faith registration and use.

The panel then assessed the respondent’s argument that the complainant had brought the complaint in an attempt at reverse domain name hijacking. The panel reiterated that there was an ongoing, multi-faceted business dispute between the parties, characterised by recent conduct that might have led either of them to suspect the good faith of the other. However, the panel declined to find reverse domain name hijacking or harassment on the grounds that the complaint was not plainly impossible as suggested by the respondent, as there had in fact been successful UDRP complaints brought in circumstances where the domain name in dispute was registered before the relevant trademark was established.

Therefore, the panel denied the complaint. The complainant's difficulties clearly stemmed from the fact that the domain name was registered in the personal name of the founder, rather than in the company name of the complainant. This is a common scenario and regularly results in headaches for companies which find themselves in dispute with an employee (or ex-employee) who is the named registrant of a critical domain name. It is thus good risk management to ensure that all domain names are registered using the company's name and address. Furthermore, a company contact email address should also be used, rather than an employee's personal email address; if not, this can effectively mean that an employee may retain control of a domain name even if it has been registered in the name of the company.

David Taylor and Jane Seager, Hogan Lovells LLP, Paris

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