UDRP panel makes finding of reverse domain name hijacking
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation, a panel has denied the transfer of the domain name ‘neurones.com’ and found that this was a case of reverse domain name hijacking.
The complainants were a Mr Luc de Chammard and a company called Neurones SA. De Chammard owned several trademarks in the term ‘neurones’, including an international registration registered in 2008 and two French trademarks, one registered in 1984 and the other in 1994. De Chammard licensed the right to use his trademarks to Neurones SA. Neurones SA was also the registered owner of the domain names ‘neurones.fr’ and ‘neurones.net’.
The respondent, a Mr Moulay Amine El Bissouri, was an engineer and a founding member of a company called Neurones Technologies, located in Morocco. The respondent was also the registered owner of the Moroccan trademark NEURONES TECHNOLOGIES with a priority date of September 18 1998. Finally, the respondent had registered the domain name ‘neurones.com’ on December 25 1996 and used it in the context of his commercial activities until 2009. In 2009 the respondent sold his shares in the company Neurones Technologies but retained the domain name, changed registrars twice and stopped pointing the domain name to any active website.
In 2004 the respondent was contacted by the complainant for the first time. The complainant offered to exchange its domain name ‘neuronestechnologies.com’ for the domain name ‘neurones.com’. The respondent rejected the offer. Nine years later, in 2013, the complainant's lawyers sent two cease and desist letters asserting trademark rights and arguing that the respondent had no legitimate interest in the domain name, which infringed the rights of the complainant. The two cease and desist letters were returned as the recipient could not be found at the address to which the letters had been sent.
Subsequently, the complainant filed a complaint under the UDRP to which the respondent filed a response.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:
- the domain name must be identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent does not have rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
In relation to the first requirement, the complainant contended - and the respondent did not object - that the domain name was identical to the complainant's NEURONES trademark, and thus the three-member panel found that this first test had been passed.
As for the second prong of the UDRP, the respondent counter-argued by highlighting that:
the term ‘neurones’ was included in the company name and trademark NEURONES TECHNOLOGY;
the term was commonly used in the IT sector; and
the domain name had been used in the context of legitimate commercial activities in the IT sector.
The panel accepted these contentions in relation to the legitimate interest of the respondent until 2009, but expressed a doubt as to the respondent's potential legitimate interest since 2009. However, the panel did not reach a conclusion on this last point as there was no need to do so, given the panel's findings on the third prong of the UDRP.
Turning to the alleged bad-faith registration and use of the domain name by the respondent, the latter rebutted the assertions of the complainant by pointing out that:
no evidence had been produced to demonstrate that the domain name had been registered in bad faith;
the complainant only contacted the respondent in 2004 (thus eight years after the registration of the domain name);
the respondent had never sought to seek to profit from the complainant's trademark; and
Neurones SA and Neurones Technologies were not competitors in any event.
The panel found that no evidence had been produced to support a finding of bad-faith registration and that it would have been unlikely for the respondent to have known of the complainant at the time of registration of the domain name in 1996, given for instance that the international registration of the NEURONES trademark by the complainant had been completed in 2008 and also given the generic nature of the term ‘neurones’.
Turning to the use of the domain name in bad faith, the panel highlighted the fact that the domain name had been used until 2009 for legitimate commercial activities and that, subsequently, it had been used passively to point to a website with pay-per-click links which did not target the complainant or its activities. Finally, the panel responded to the respondent's argument in relation to the amount of time that the complainant waited to take action and, whilst acknowledging that the US doctrine of laches did not normally apply under the UDRP, stated that this circumstance could be a relevant factor to take into account when deciding on the last two requirements of the UDRP. The fact that the complainant had waited eight years to first contact the respondent, and that it had then waited an additional nine years to take further action, was another reason for the panel to find that there was no bad faith on the part of the respondent.
Finally, and further to the respondent's request to the panel to confirm that this was a case of reverse domain name hijacking, the three-member panel concurred as it found that the complaint had been filed lightly without any real argumentation or evidence and that this constituted bad faith on the part of the complainant.
The finding of the panel is very coherent on all points and, in view of the evidence presented, it could have been easily anticipated that the complaint would be doomed to failure and a finding of reverse domain name hijacking was likely.
This case shows that the UDRP’s three-prong test is to be taken seriously and that it is of little use to file a complaint dogmatically stating that each prong has been met without any real substance to support such statements, even more so with a three-member panel. In this case, many circumstances supported the respondent's case, including the generic nature of the term ‘neurones’, the considerable delay on the complainant's part to take action, and the inclusion of the term ‘neurones’ as part of the respondent's corporate name and trademark. The outcome was rather easy to predict and it goes to show that a sufficient understanding of the UDRP and associated principles and precedents is necessary, as otherwise the time and money spent in preparing and filing a complaint can be wasted.
David Taylor and Vincent Denoyelle, Hogan Lovells LLP, Paris
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