‘pardonmyfrench.com’ decision: UDRP does not pardon lack of evidence

International
  • Owner of PARDON MY FRENCH mark sought transfer of ‘pardonmyfrench.com’ under UDRP
  • Domain name was registered before complainant acquired trademark rights; therefore, there was no suggestion of taking advantage of complainant's mark
  • Date of last update to WHOIS record did not appear to coincide with any change in way domain name had been used

 

In a recent decision under the UDRP before WIPO, a panel has denied the transfer of a domain name that was identical to the complainant's trademark because the complainant failed to demonstrate that the domain name was registered and used in bad faith.

Background

The complainant was a member of a collective of four French DJs, known under the stage name DJ Snake, based in Lisbon, Portugal. He owned an EU and a US trademark for PARDON MY FRENCH.

The respondent was Bradley Merchant of Zionsville, Indiana, United States. No further information was provided and the respondent did not submit a response.

The disputed domain name was ‘pardonmyfrench.com’, registered on 23 September 2002. At the time of filing, the domain name was resolving to a blank page except for the following statement “Nothing Found. It seems we can’t find what you’re looking for. Perhaps searching can help”. However, according to the Internet Archive, the domain name had been resolving either to a webpage offering it for sale, a webpage containing sponsored links, a blank webpage except for a message stating “Not Found. Sorry, but you are looking for something that isn’t here” or a website described by the complainant as a personal blog.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at Paragraph 4(a):

  • the domain name registered by the respondent 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.

Decision

With regard to the first requirement, the panel found that the complainant had established trademark rights in the terms ‘pardon my French’, which were incorporated in their entirety in the domain name and, therefore, the domain name was identical to the complainant's trademark. The first limb was therefore satisfied.

Turning to the second requirement of the UDRP, and the respondent's rights or legitimate interests (or lack of them), a complainant must prove that a respondent has no rights or legitimate interests in respect of the domain name in question. A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise. If the respondent fails to do so, then the complainant is deemed to satisfy Paragraph 4(a)(ii) of the UDRP.

Given that the website to which the domain name was pointing was almost blank and that, therefore, the domain name was not in use, the panel considered that the complainant had made out a prima facie case and thus the second limb was satisfied.

Finally, in relation to the third requirement, a complainant is required to demonstrate that the domain name in question was both registered and used in bad faith.

In the present case, the complainant argued that the domain name was originally registered with the intention to sell it and thus in bad faith. However, the panel noted that the domain name was registered before the complainant acquired trademark rights and, therefore, that there was no suggestion of taking advantage of the complainant's trademark.

In this regard, Section 3.8.2 of the WIPO Overview 3.0 states as follows:

As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. […]

In the present case, the complainant did not substantiate the argument that the respondent had advance notice of his plans and, in any case, the complainant only obtained his trademark rights nine years after the domain name was registered.

In addition, Section 3.8.1 of the WIPO Overview 3.0 states as follows:

[…] Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

According to the evidence submitted by the complainant, it appeared from the Internet Archive that there had been a change in registrant since the creation of the domain name. The registrar would not provide the date when the respondent first acquired the domain name and, therefore, the panel examined the most recent update of the WHOIS record, which occurred on 25 August 2018. Recalling that there were several reasons why a WHOIS record may be changed, other than a change in registrant, the panel stressed that the date of the last update to the WHOIS record did not appear to coincide with any change in the way the domain name had been used. The panel further noted that the current expiry date of the domain name also coincided with the anniversary of its creation date.

The panel considered the overall circumstances of the case and found that the complainant had failed to establish that the respondent registered the domain name in bad faith. As a result, the panel dismissed the complaint.

Comment

This decision highlights how important it is for complainants to substantiate their claim, especially in cases where a domain name exactly matching their trademark is not being used.

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