Domain name ownership unaffected by change of business name

International

Hedera AB has recently filed an unsuccessful complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organisation (WIPO) concerning the domain name ‘stabletable.com’.

The complainant owned several trademarks around the world consisting of the word ‘stabletable’:

  • the South African word mark STABLETABLE (No 1997/04925), filed on April 2 1997 and registered on August 2 2001 for goods in Class 20 of the Nice Classification
  • the figurative Community trademark STABLETABLE (No 008755531), filed on December 14 2009 and registered on August 18 2010 for goods and services in Classes 6, 20 and 45; and
  • the word-and-device international trademark STABLETABLE X (No 1049912), registered on July 1 2010 for goods and services in Classes 6, 20 and 45 in respect of various designated countries, including the United States.

The international trademark was registered in the United States on September 27 2011, with a designation containing the rider "no claim is made to the exclusive right to use 'stabletable' apart from the mark as shown". The complainant stated that its South African trademark was assigned to it on September 12 2011 by a company named Orbijet (Pty) Limited.

The complainant asserted that it used these trademarks to sell a patented, self-stabilising table base automatically adjustable to any floor surface without the need for manual adjustment.

The domain name ‘stabletable.com’ was registered on November 24 2007 by an entity referred to as Crosspath, although its current holder was Captive Media.

The respondent alleged that it registered the disputed domain name in good faith on November 24 2007 whilst doing business as Crosspath, and in 2012 it changed its name to Captive Media. The respondent argued that it had retained unbroken ownership and possession of the disputed domain name since the date of its creation. The respondent described itself as "a prominent and respected web development company" and explained that it provided advertising and online search services to internet users. The domain name was directed to a pay-per-click website.

On November 14 2008 a representative of the complainant contacted the registrant of the time by email indicating that it was "looking for a new domain name for a planned new business". The complainant’s representative made an offer to purchase the domain name for $500, but no agreement was concluded.

The respondent requested termination or suspension of the UDRP proceeding in light of a civil action that the respondent had filed on December 9 2013 (the same date on which it received notification of the complaint) against the complainant in the US District Court for the Northern District of California, for unfair competition and for a declaratory judgment of non-infringement with respect to the respondent’s registration, use and ownership of the domain name.

However, in this regard the panel quoted paragraph 18 of the UDRP:

"(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

(b) In the event that a party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, it shall promptly notify the panel and the provider."

The panel explained that, pursuant to Paragraph 18(a) of the UDRP, legal proceedings may be initiated prior to or during an administrative proceeding, and proceedings may be terminated or suspended in consequence, or the panel may proceed to a decision, according to the exercise of its discretion. The panel underlined that the notion of discretion had been considered in numerous WIPO cases, such as DNA (Housemarks) Limited v Tucows.com Co (Case No D2009-0367) and Navista SA v Virtual Point Inc dba CrossPath, It Manager (Case No D2012-1157).

The panel shared the same interpretation of the notion of discretion as described in the Navista case, explaining that the UDRP generally obliges a panel to make a decision on a complaint. The panel quoted the panel in Navista:

"The present panel takes the view that the complainant has made a valid complaint under the UDRP and, absent circumstances to the contrary, is entitled to a decision on the merits of its complaint without delay. The panel entertains no notion of what may be done with the decision after the panel is functus officio and does not address its decision to the attention of any other forum. The panel is also concerned that, as a general principle, and without any aspersion as to the motivation of either party in this case, diversions that may create inordinate delay, and thereby negate the best intentions of the UDRP, should be avoided unless the circumstances are exceptional. Partly for this reason, the panel does not consider a significant stay of the proceeding to be a viable option."

Accordingly, the panel denied the respondent’s request for suspension or termination of the UDRP proceeding, for the same reasons.

Once this preliminary issue of the effect of court proceedings had been dealt with, the panel was able to proceed to a decision on whether the UDRP conditions were fulfilled. In order to succeed under the UDRP, a complainant must satisfy all of the following three requirements of Paragraph 4(a):

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

The complainant asserted that the disputed domain name was identical to the complainant’s registered trademarks. The panel was satisfied that the complainant had rights in its registered trademarks for the word mark STABLETABLE and that the disputed domain name was identical to the complainant’s trademark.

The panel explained that it did not take into consideration the fact that none of the complainant’s trademarks, with the exception of the South African mark, itself acquired by assignment in 2011, pre-dated the creation of the disputed domain name. The time of registration does not affect the complainant’s case under Paragraph 4(a)(i) of the UDRP (see the consensus view in Paragraph 1.4 of the WIPO Overview 2.0, which states that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP, although in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP). Accordingly, in the present case, the panel found that the first element under the UDRP had been established.

Concerning the second requirement of the UDRP, Paragraph 4(c) sets out a non-exhaustive list of circumstances which may suggest that a respondent has rights or legitimate interests in a domain name, as follows:

  • before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the domain name in connection with a good-faith offering of goods or services;
  • the respondent has been commonly known by the domain name, even if it has acquired no trademark rights; or
  • the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.

The panel noted that the requirements of Paragraph 4(a) were conjunctive. Given that the third requirement of the UDRP could not be established, it was therefore unnecessary for the panel to address the issue of the respondent’s rights or legitimate interests in the domain name.

Concerning the third requirement of the UDRP, Paragraph 4(b) sets out a list of non-exhaustive circumstances that may suggest registration and use of a domain name in bad faith, as follows:

  • the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant or to a competitor, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
  • the respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
  • the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • the respondent is intentionally using the domain name in an attempt to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The panel had to clarify the date when the domain name was registered in order to consider the date when registration in bad faith had to be analysed. The complainant alleged that the holder of the domain name had changed in 2011. Usually, the question of registration in bad faith requires to be assessed at the date when the current registrant took possession of the disputed domain name (see Paragraph 3.7 of the WIPO Overview 2.0). In this case, the panel agreed there was a formal change in Whois registration data, but considered that "the evidence clearly established an unbroken chain of underlying ownership by a single entity, that being the respondent". The panel was satisfied that the change identified in the Whois only related to the respondent's registered business names (sometimes known as ‘doing business as’ names) and that the respondent’s contact details had remained the same throughout the period of registration. Accordingly, the panel considered that the question of registration in bad faith must be assessed at the original date of registration of the domain name.

The panel noted that Paragraph 4(a)(iii) of the UDRP required the complainant to prove both registration and use in bad faith. It followed that, if the complainant had failed to prove registration in bad faith, then it was not necessary to consider the question of bad-faith use and the complaint must fail. In the panel's view, that was the case here.

The panel noted that the complainant did not become the holder of the South African trademark (the only trademark that predated the domain name) until it acquired it by assignment in September 2011. Consequently, the respondent could not have intended to target the complainant in 2007 when the domain name was created as, at that time, the complainant had no trademark rights. Moreover, the panel accepted the respondent's explanation as to why it registered the domain name on the basis that the words ‘stable table’ were used by various third parties as a combination of two ordinary English words without any reference to the complainant’s trademarks. Accordingly, the panel found that the complainant had failed to establish the third element under the UDRP and denied the complaint.

Finally, the respondent requested a finding of reverse domain name hijacking (RDNH) from the panel. The UDRP Rules provide that complainants may be found guilty of attempted RDNH if it is found that they are using the UDRP "in bad faith to attempt to deprive a registered domain name holder of a domain name". The panel stated that "WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of [RDNH]" and that  "to establish [RDNH], a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name".

In support of its request, the respondent underlined the complainant’s awareness of the disclaimer in the complainant’s trademark registration in the United States. According to the panel, the disclaimer demonstrated the weakness of the complainant’s trademark, but it was not conclusive of "the question of whether the respondent was or was not targeting the complainant’s rights in that trademark, or in its other trademarks".  

The respondent also referred to the complainant’s statement that the disputed domain name was registered "well after the date of the complainant’s initial South African trademark registration" and argued that this was misleading as this registration was not the complainant’s initial registration and was only acquired by assignment afterwards. However, the panel considered that the reason why the complainant’s characterisation of its South African trademark as its "initial […] trademark" was made was that, "from the point of view of the complainant’s case as pled, that detail was not particularly important". This was because the complainant was working on the incorrect assumption that the date of registration was the date that the disputed domain name had changed hands, namely at some point after the middle of 2011. If this had been correct, the panel would have been required to assess the question of registration in bad faith at a date when the complainant’s rights were more established. The complaint may nevertheless have failed in light of the respondent’s extensive rebuttals, but the panel underlined that mere lack of success of the complaint was not itself sufficient for a finding of RDNH. As a result, the respondent’s request for a finding of RDNH was denied.

The case is interesting in that it touches on several issues, from the effect of parallel court proceedings through to the correct date of registration for the assessment of bad faith upon a change of business name and the potential for a finding of RDNH. 

David Taylor and Jane Seager, Hogan Lovells LLP, Paris

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