Furnishing evidence of bad faith essential under UDRP


In a recent decision under the Uniform Dispute Resolution Policy (UDRP), a trademark holder has been denied the transfer of a domain name confusingly similar to its trademark for failure to furnish evidence of the respondent's bad faith.

The complainant was Omnia Italian Design Inc, a company based in California, United States, which manufactures and sells leather furniture. The complainant has been using in commerce the trademarks OMNIA and OMNIA ITALIAN LEATHER FURNITURE since 1989, and registered both marks with the United States Patent and Trademark Office (USPTO) in 2002. In addition, the complainant operates a website at ‘omnialeather.com’, on which it promotes its furniture business.

The respondent was Andrew Greatrex, the owner of a furniture company, National Leather, based in Texas, United States. The respondent registered the disputed domain name, ‘omnialeatherfurniture.com’ on November 1 2009 and was using it to redirect users to its website at ‘urleathersofa.com’, where it sold the complainant's furniture products. The respondent claimed to be an authorised distributor of the complainant's products until December 2012.

The complainant sent to the respondent a cease and desist letter on February 5 2013 and, following the respondent's failure to respond, it filed a complaint to recover the domain name on February 26 2013.

To be successful in a complaint under the UDRP, a complainant must satisfy all of the following three requirements:

  • 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 limb of the three-prong test, a complainant must first demonstrate that it has registered or unregistered trademark rights, regardless of where and when the trademark was registered (or first used), although these factors may be relevant for the third limb of the three-prong test.

In the present case, the complainant had been using the trademarks OMNIA and OMNIA ITALIAN LEATHER FURNITURE since 1989 and had also registered both marks with the USPTO in 2002. The panel thus held that the complainant had registered and unregistered rights in the marks OMNIA and OMNIA ITALIAN LEATHER FURNITURE.

The panel then examined whether the domain name was identical or confusingly similar to the complainant's trademarks. It considered that the terms ‘leather furniture’ were descriptive and that such terms referred to the same goods for which the complainant's trademarks had been registered. Likewise, the panel held that the term ‘Italian’ was also descriptive and insufficient to distinguish the domain name from the complainant's marks. The panel thus concluded that the domain name was confusingly similar to a trademark in which the complainant had rights. The complainant therefore satisfied the first requirement of Paragraph 4(a)(i) of the UDRP.

Turning to the second limb of the three-prong test, the key decision that sets out the standards for assessing whether the use of a domain name by an authorised or unauthorised reseller or distributor is legitimate or not is Oki Data Americas Inc v ASD Inc (WIPO Case No D2001-0903). However, in the present case, the panel deemed unnecessary to examine whether the respondent had rights or legitimate interests in the domain name under the Oki Data test, given that the evidence showed that the "complainant acquiesced in the respondent's registration and use of the domain name", as noted by the panel in a footnote. The panel thus proceeded to examine the third limb of the three-prong test, without making a determination in respect of the respondent's rights or legitimate interests in the Domain Name.

Regarding the third limb, the panel found that the complainant did not satisfy this requirement because it had failed to provide evidence demonstrating that the respondent had registered the domain name in bad faith. The panel stressed that the complainant did not rebut - in spite of having the opportunity to do so - the respondent's contention that it had a prior business relationship with the complainant and that the complainant was aware and acquiesced to the respondent's use of the domain name. Thus, the panel held that the complainant did not satisfy the third element of the three-prong test given that there was no evidence of bad-faith registration.

However, the panel acknowledged that, even though there was no evidence of bad-faith registration of the domain name, the complainant may well have a trademark infringement claim in respect of the respondent's ongoing use of the domain name. However, the panel noted that such claim fell outside the scope of a UDRP proceeding.

Whilst recognising that complainants must provide evidence to support their claims, this decision also highlights that, although the UDRP may be a faster and cheaper alternative to court proceedings, some controversies, such as the present case, which involve complex IP issues, are better suited for a court rather than a UDRP proceeding, which was designed for obvious cases of cybersquatting. As held by the panel in the present case:

"The policy does not apply to trademark infringement per se; it applies to the bad-faith registration and use of a domain name which is confusingly similar to a party’s trademark and in which the domain name registrant has no rights or legitimate interests. The fact that the respondent here may currently be infringing on the complainant’s trademark does not by itself bring this dispute within the proper scope of the policy".

David Taylor and Soraya Camayd, Hogan Lovells LLP, Paris

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