No Bad Faith Registration = No UDRP Transfer

Author:Mr David Taylor and Jane Seager
Profession:Hogan Lovells
 
FREE EXCERPT

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name wekit.com because the Complainant failed to prove that the Respondent had registered the domain name in bad faith, even though the Respondent was advertising it for sale and the Complainant had a matching trademark.

Background

The Complainant was a marketing agency founded in 2006 in Turin. It held an Italian trademark registration for the figurative mark WEKIT, applied for in October 2015 and registered in October 2018. There was nothing to indicate that the Complainant had used the trademark prior to 2015.

The Respondent was yang jin jie, based in China. Little was known about the Respondent, who did not reply to the complaint.

The Domain Name was , registered on 22 July 2002. Whilst it did not resolve to an active website, the Complainant's evidence indicated that it was offered for sale on the registrar's website.

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.

Identity / similarity

As far as the first limb was concerned, the Panel easily found that this was satisfied as the Complainant had rights in the trade mark WEKIT and the Domain Name was identical to it.

Rights / legitimate interests

With regard to the second limb, a complainant is required to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a case is established, the burden of proof then shifts to the respondent, who must put forward arguments and evidence to demonstrate rights or legitimate interests in the domain name. In this case, the Panel did not address the rights or legitimate interests of the Respondent, given its conclusion on bad faith under the third limb.

Bad faith

As far as bad faith registration and use was concerned, the Panel found no evidence of this. Based on the limited evidence provided, the Panel noted that the Domain Name was registered several years before the Complainant was formed and...

To continue reading

REQUEST YOUR TRIAL