‘Exact Match' UDRP Complaint Denied As Complainant Fails To Prove Knowledge Of Its Mark

Author:Ms Jane Seager and Thomas Raudkivi
Profession:Hogan Lovells
 
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MiWay Insurance Limited sought the transfer of 'miway.online' under the UDRP The panel found that there was reason to believe that the domain name was selected as it suggests the phrase 'my way', rather than as a reference to the complainant's mark The case highlights the inherent risks associated with so-called 'passive holding' cases In MiWay Insurance Limited v Domains By Proxy LLC/Sahi (WIPO Case D2019-1987), a panel has refused to transfer the domain name 'miway.online' under the Uniform Domain Name Dispute Resolution Policy (UDRP), finding that the complainant had failed to establish bad faith under the third element of the UDRP.

Background

The complainant, MiWay Insurance Limited, was a South African public company controlled by the publiclylisted financial services group Sanlam. Since 2008, the complainant had built a business offering insurance coverage, including short-term insurance policies online via its website at 'www.miway.co.za'. The complainant asserted trademark rights in its South African trademarks for MIWAY, registered since 2 November 2010.

The respondent, Jatinda Sahi, an individual based in the United Kingdom, had registered the disputed domain name 'miway.online' on 2 June 2018 using a privacy service. The disputed domain name had not been used in connection with any active website, but simply resolved to a registrar parking page indicating that the disputed domain name was parked for free.

UDRP requirements

To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP - namely, that:

the disputed 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 the disputed domain name; and the disputed domain name was registered and is being used in bad faith. Decision

Identity/similarity

The panel found that the complainant had satisfied the first element of the UDRP given that the disputed domain name reproduced the complainant's MIWAY trademark in its entirety. Disregarding the generic toplevel domain '.online', the disputed domain name was identical to the complainant's trademark.

Rights/legitimate interests

The panel further accepted that the complainant had made a prima facie case that the respondent had no rights or legitimate interests in the disputed domain name, noting that the complainant had established:

trademark rights; confusing...

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