Transfer denied under UDRP for not going by the book

International

In a recent domain name dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel has provided a noteworthy illustration of the well-established principle that the use of a domain name consisting of dictionary terms may constitute a legitimate use, even if such domain name is identical to a trademark.

The complainant was Alpitour SpA, a company providing travel services based in Turin, Italy. The complainant had Italian trademark rights in the term ‘easy book’ since 1987, for services in relation to travel services, as well as a Community trademark (CTM) application for the term ‘easy book’.

The respondent was a Mr Jean Nordmann, a private individual from Nice, France.

The disputed domain name was ‘easybook.com’, which had been registered on November 6 1996 and was being used by the respondent to redirect to a website offering for sale electronic books, although previously the website associated with the domain name displayed an offer to sell the domain name for €45,000.

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.

The first requirement of the three-prong test is a low threshold requirement that is generally satisfied by demonstrating trademark rights in a name, whether registered or unregistered, and regardless of where or when the trademark was registered or first used, although all of these factors may be relevant for the third element of the UDRP (registration and use of the domain name in bad faith).

In the present case, the complainant relied on an Italian trademark registration for the term ‘easy book’, as well as on a CTM application, which was subject to an opposition proceeding.

The panel held that the complainant had rights in the name Easy Book, given that it had registered trademark rights in Italy, and considered that the domain name was identical to the complainant's trademark. Thus, the complainant satisfied the first element of the three-prong test.

Turning to the second requirement, a complainant must establish that a respondent does not have rights or legitimate interests in the disputed domain name and, once a complainant makes a prima facie showing in this regard, the burden shifts to the respondent.

The complainant argued that the respondent had no rights or legitimate interests in the domain name. It highlighted that the respondent did not have any trademark rights in the name Easy Book and was not commonly known by said name. Furthermore, the complainant pointed out that there was no connection between the complainant and the respondent so as to justify the registration and use of a domain name consisting of a term in which the complainant had rights. In addition, the complainant had demonstrated that the domain name was being used to point to a website offering for sale the domain name for €45,000.

The respondent, however, claimed that it had used the domain name for 17 years for email purposes and for a website offering for sale electronic books, which are goods or services that do not compete with those of the complainant.

The panel observed that the domain name consisted of two common or dictionary terms, ‘easy’ and ‘book’, and accepted the respondent's contention that it was using the domain name for a website offering electronic books and a forum containing posts predating the filing of the complaint.

According to the panel, such use of the domain name related to the generic or descriptive value of the domain name and not to any trademark value derived from the complainant or its rights, particularly given that the respondent's services (electronic books) were not similar to those provided by the complainant (travel services).

Finally, the panel observed that the evidence provided by the complainant that the respondent was offering the domain name for sale was "not in itself […] conclusive".

Thus, the panel concluded that the respondent had a legitimate interest in the domain name and considered that, in view of the foregoing finding, it was unnecessary to examine whether the respondent had registered and used the domain name in bad faith.

Therefore, the panel denied the transfer of the domain name to the complainant.

This decision demonstrates that, when a domain name consists of a combination of dictionary terms, one must tread carefully when assessing chances of success of a complaint under the UDRP, even with a trademark identical to said domain name. This is particularly the case where the trademark reproduced identically in the domain name is registered for goods or services which are different from the dictionary meaning conveyed by the website associated with the domain name. A distinction is thus made between the trademark value and the descriptive value of a domain name.

In addition, the decision also highlights that an offer to sell a domain name does not by itself constitute evidence of lack of legitimate interest (or bad faith), and that the overall circumstances of the case must be examined.

David Taylor, Soraya Camayd and Vincent Denoyelle, Hogan Lovells LLP, Paris

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