UDRP panel orders transfer of domain name even though registration predated filing of trademark application

International

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the National Arbitration Forum, a panel has ordered the transfer of a domain name although registration of the domain name predated the filing of the trademark application.

The complainant was Party Bus MN LLC, a company that provided transportation services for weddings, clubbing, birthdays, proms, corporate events, concerts and tours. The complainant was the owner of the trademark RENT MY PARTY BUS in the United States. The complainant's trademark RENT MY PARTY BUS was filed on November 25 2014 and registered on July 28 2015. The complainant allegedly first used its RENT MY PARTY BUS trademark on December 31 2002.

The disputed domain name was ‘rentmypartybus.com’. It was registered in October 2008 by the respondent, who used it to resolve to a website which offered essentially the same services as those provided by the complainant. 

The complainant decided to file a UDRP complaint to obtain the transfer of the domain name. The respondent failed to file an actual response and only submitted two exhibits showing that proceedings had been initiated against the complainant in the US District Court for the District of Minnesota.

The panel noted that it had no obligation to take those documents into account in reaching its decision but decided, in this case, to read and take limited notice of certain claims contained therein in order to assess whether:

  1. the complainant filed the complaint in good faith;

  2. the dispute was within the scope of the policy; and

  3. the panel should suspend or terminate the UDRP proceedings in consideration of the court proceedings.

The panel found that it had a proper mandate to decide the matter for the following reasons:

  • The UDRP could be applied to the facts presented to the panel; 
  • The court proceedings were initiated less than two weeks ago and the court may take months to issue a decision; 
  • The respondent was not a party to the court proceedings; and 
  • The cause of action in the court proceedings would not determine the ownership of the domain name.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at 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.

With regard to the first part of the UDRP, the panel found that, given the complainant's trademark registration, the domain name was identical to the trademark. The panel noted that the consensus opinion of prior UDRP panels is that registration of the disputed domain name prior to the filing date of the trademark registration is irrelevant for the purposes of Paragraph 4(a)(i) of the UDRP. Therefore, the panel concluded that the domain name was confusingly similar to the complainant's trademark.

The second limb of the three prong test requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the disputed domain name. Without a response from the respondent, the panel relied on the complainant's undisputed representations, namely:

  • There was nothing to indicate that the respondent might be known by the domain name. 
  • There was no evidence that the complainant had authorised the respondent to use the trademark and the complainant denied having granted any such authorisation. 
  • There was no evidence of good-faith use of the domain name since it resolved to a website advertising competing services.

The panel found that the complainant had established a prima facie case.

Due to the respondent's failure to respond and the complainant’s claim to common law trademark rights through use since 2002, the panel saw no reason to infer that the respondent had made prior good-faith use of the trademark thus giving it rights or interests.

Furthermore, the panel found that unsupported and unexamined claims made in another action (ie, the proceedings before the Minnesota court), provided as exhibits by the respondent, should not stand in the place of a formal response in UDRP proceedings.

The panel concluded that the respondent had no rights or legitimate interests in the domain name.

Turning to the third requirement, the panel found that the domain name was registered and used in bad faith for the following reasons:

  • The domain name was identical to the complainant’s trademark and thus there was a likelihood of confusion with the latter as to the source or affiliation. 
  • The resolving website existed for commercial gain.

The panel therefore found that all three requirements of the UDRP were met and ordered the transfer of the domain name to the complainant.

This outcome could perhaps have been avoided if the respondent had filed a response to the UDRP complaint arguing, for example, that its registration of the domain name could not have been in bad faith because it was not aware of the complainant's common law trademark rights when it registered the domain name.

David Taylor and Sarah Taieb, Hogan Lovells LLP, Paris

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