Domain name transfer refused as complainant tried to game the system

International
A complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the Czech Arbitration Court for the recuperation of the domain name ‘streetwave.com’ has been rejected as being unreasonable and constituting reverse domain name hijacking (Case 100220, April 8 2011).
 
Complainant Streetwave Pte Ltd was a Singapore-based company designing and producing caster boards (which are closely related to skateboards). It had made various applications, all within the last 12 months, to register the term ‘streetwave’ as a trademark in the European Union, the United States and various other countries. It also owned a number of domain names containing the string ‘streetwave’.
 
Respondent Ashantiplc Ltd claimed that it had registered the domain name ‘streetwave.com’ in 2000. While it was unable to provide the original receipt for purchase, the respondent produced an invoice from Fabulous.com, the domain name registrar, showing that it provided domain name services to the respondent in 2003.
 
The complainant sought the transfer of the domain name. To be successful under the UDRP, a complainant must evidence that:
  • 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.
In respect of the first limb, the complainant contended that the domain name was identical to its company name, trademarks and domain names. To address the second requirement, it claimed that the domain name had not been in active use since it was registered and that the word ‘streetwave’ did not appear in the respondent's name and contact details. As to the third limb, it was alleged that the respondent's use of the domain name as a parking page which contained links to other websites, including those belonging to competitors of the complainant, was evidence that the domain name had been used in bad faith.
 
In response to these allegations, the respondent stated that it had registered the domain name before the complainant was incorporated and, therefore, before its trademark applications were made. Various previous UDRP decisions were relied upon to assert that, when a domain name is registered before a trademark, this registration is generally not in bad faith, since the party registering the domain name could not have taken a right which did not yet exist into consideration. The respondent also submitted that the use of the domain name for 10 years was legitimate and the complainant had not established otherwise.
 
Further, the respondent claimed that it had used the domain name for paid advertising links relating to music and that the word ‘streetwave’ had connotations with music. It produced evidence of this use since 2004. It also contended that the test for domain name transfer had not been satisfied because the trademark registration applications had been made within the last 12 months.  
 
The panel decided that the domain name had not been registered in bad faith because the registration took place 10 years before the trademark registration applications were made. Moreover, there was nothing to suggest that the trademark had been used by the complainant before registration of the domain name in such a way that the respondent knew or should have known of it. The panel also looked at whether use of the domain name as a parking site constituted use in bad faith. It did not have to address this point since the complainant had failed to establish that there had been registration in bad faith, but did so for the sake of completeness. The panel was satisfied that ‘streetwave’ had music connotations, as contended by the respondent, and that this was the reason for choosing the domain name. This followed earlier URDP decisions holding that use of a domain name for a parking page was legitimate in certain circumstances if the domain name was chosen because it contained a common or generic word. It was also held that, since the complainant produced caster boards and the parking page contained links to music sites, there was no proof of the complainant's claim that its customers might de directed to a competitor's site.

The panel did not need to consider the first and second requirements of the UDRP because the complainant had failed to establish either aspect of the bad-faith requirement.
 
The panel went on to find the complainant guilty of reverse domain name hijacking, defined in the UDRP Rules as "using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name". The panel pointed out that the purpose of the UDRP was to deter cybersquatting, which necessarily featured bad-faith registration and use, but, in this case, there were no grounds or justification for the filing of the complaint.
 
Findings of domain name hijacking are relatively rare and usually made only in cases where the panel is of the opinion that complainants are deliberately trying to abuse the UDRP by filing complaints when they know that there are no realistic chances of success. Panels will often grant the complainant the benefit of the doubt on the grounds that it was not immediately apparent that the complaint would fail, but there was no such generosity in the case at hand. It seems that the complainant did try to game the system by using the UDRP as a shortcut and cheap alternative to court litigation or purchase of the domain name in circumstances where the complaint was clearly doomed to failure.
 
It is regrettable to see the UDRP being used in such a fashion and it is important to sanction complainants using the UDRP abusively in order to preserve its efficacy and not allow it to be diluted. What is at stake in instances like this is the integrity of the UDRP as a whole. It is perhaps unfortunate in cases like these that panels have no power to sanction complainants by ordering monetary damages or making costs awards, as the mere declaration of reverse domain name hijacking by a panel does not appear to be a particularly strong deterrent.
 
David Taylor and Jane Seager, Hogan Lovells LLP, Paris

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