Bad Faith Registration Cannot Be Proved Retrospectively

Author:Mr David Taylor and Jane Seager
Profession:Hogan Lovells
 
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of the domain names adgrabber.com and addgrabber.com due to insufficient evidence of the respondent's bad faith at the time of registration.

Background

The Complainant was Adgrabber AB, a Swedish company operating an online platform related to media and marketing purchases. Created on 8 August 2018, the Complainant was the owner of the Swedish trademark for ADGRABBER, which was filed on 20 August 2018 and registered on 16 October 2018.

The Respondent was Robin Kochauf of Gordito AB, based in Sweden. He was previously the Chief Technical Officer (CTO) of the Complainant's company and signed a shareholder agreement in 2019.

The Domain Names were and , registered respectively on 10 August and 13 August 2018. The Domain Name had been used to point to the Complainant's website. The Domain Name pointed to a parking page.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(a) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) The respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered and is being used in bad faith.

The Panel first addressed two preliminary procedural issues regarding the language and the applicability of the UDRP in this matter.

Since the Complaint was filed by the Complainant in Swedish and the Respondent was also a Swedish entity, the Complainant requested that the proceedings be in Swedish even though the language of the registration agreement was English. The Respondent disagreed and insisted on a proceeding in English to minimize interpretational error in the decision. Given the Respondent's objection and the language of the registration agreement, the Panel denied the Complainant's request.

The Respondent then challenged the applicability of the UDRP in this matter based on the shareholder agreement signed between the Parties, whereby any disputes between the shareholders should be settled in a Swedish court. The Respondent's argument was not accepted by the Panel due to the fact that the Respondent was already bound by the UDRP via his registration agreement with the registrar.

Identity / similarity

As far as...

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