Domain name complaints must include factual allegations beyond language of UDRP

In Masai Clothing Company ApS v Ashantiplc Ltd (Case D2012-0271, May 10 2012), a women's apparel company from Denmark, Masai Clothing Company ApS, has failed to obtain the transfer under the Uniform Domain Name Dispute Resolution Policy (UDRP) of the domain name ‘masai.com’ from a Hong Kong-based company, Ashantiplc Ltd. 

The disputed domain name, registered on May 15 2000, was used to display sponsored listings of sites related to Africa and travel but, at some point, also included references to sites related to women's fashion.

To be successful in a UDRP proceeding, a complainant must establish each of the following elements of a three-prong test - namely 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.

Regarding the first element, the panel agreed with the complainant that the domain name ‘masai.com’ was identical to the MASAI mark in which the complainant had rights. Thus, the complainant had satisfied the first element of the three-prong test.

As for the second element, the complainant contended that the respondent did not have any rights or legitimate interests because:

• the complainant had not authorised the respondent to use its trademarks;
• the respondent was not commonly known by the disputed domain name; and
• there was no evidence of the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a good-faith offering of goods or services.

Interestingly, the panel pointed out that the complainant's allegations addressing the respondent's rights or legitimate interests made no reference to particularised facts, but rather "borrowed heavily" from the language of the UDRP.

In response to the complainant's allegations, the respondent asserted that it had a particular interest in African tribes such as the Masai, as evidenced by the fact that the respondent’s corporate name was also derived from the name of another African tribe (Ashanti), and that the domain name had been consistently used in connection with material related to Africa and the Masai.

The panel acknowledged that a respondent may have a right or legitimate interest to register and use a domain name to attract internet traffic based on the appeal of a common descriptive term, such as ‘masai’. However, it emphasised that, in these cases, a domain name must have been registered for its descriptive value and not for any value attached to the mark.

The panel refrained from ruling whether the complainant established a prima facie case of lack of rights or legitimate interests and whether the respondent had proven the existence of rights or legitimate interests in the disputed domain name because, in the panel's view, the question of whether the domain name was used for its descriptive or trademark value was closely related to whether the respondent had registered and used the domain name in bad faith. Thus, this issue was addressed in the third part of the test.

In respect of the third element, the complainant mainly argued that the respondent was taking advantage of consumer confusion by using the complainant’s trademark to attract internet users to the respondent’s website. Although the complainant provided evidence that the respondent had used the disputed domain name in connection with pay-per-click links to women’s fashion websites, the period of time during which those links were displayed was unclear. The respondent explained that a change in service providers had caused a brief display of clothing-related links, but that the historical content of the website had always been related to Africa. Furthermore, the respondent stressed that once the clothing-related links were brought to the respondent’s attention, these were eliminated immediately.

Although displaying commercial links to competitors of a complainant often constitutes evidence of bad-faith use, in this case the panel pointed out that consideration of the question of whether such a recent display was a deliberate act for which the respondent must take responsibility did not in fact shed any light on the question of bad-faith registration. In this regard, the panel found that the complainant had not submitted sufficient evidence relating to bad-faith registration, such as evidence demonstrating the level of public recognition of the trademark at the time of registration, which could have supported the complainant's allegation that the respondent had registered the domain name for its trademark value. Further, the panel pointed out that the complainant had not made any specific factual allegations regarding bad faith at the time of registration.

The available proof showed that, prior to the clothing-related links, the website provided links indirectly related to the dictionary meaning of ‘masai’, such as directory links to Africa, and the panel expressed its concern that the complainant had failed to acknowledge or address the earlier appearance of the website in its complaint. As a result, the panel found that the complaint failed for lack of evidence that the domain name had been registered in bad faith. In the light of this conclusion, it was unnecessary to address the issue of good-faith use any further.

Having a registered trademark is simply not enough to be successful in a domain name dispute proceeding, particularly in the case of trademarks comprising common or descriptive terms. In such cases, the trademark owner has a heavier burden to establish that the use of an identical or similar term in a domain name means that such domain name was registered and used in bad faith. Consequently, this case serves as a reminder to trademark holders that their complaints must include specific factual allegations beyond the language of the UDRP and that said allegations must be supported by corresponding evidence, if available. In addition, all three requirements of the UDRP must be proven, and the last test requires both registration and use in bad faith.

David Taylor and Jane Seager, Hogan Lovells LLP, Paris