No UDRP Remedy For Failure To Renew

Author:Mr David Taylor and Aissatou Sylla
Profession:Hogan Lovells
 
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International - Hogan Lovells

The complainant, which owned several TITONI marks, sought the transfer of 'titoni.com' under the UDRP; the domain name had lapsed in 2018 due to the complainant's failure to renew it The panel found that the complainant had not established that the respondent had registered the domain name in order to sell it to the complainant The UDRP was not primarily designed to make up for the mistakes of complainants In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member panel has refused to transfer the disputed domain name 'titoni.com', 􀂦nding that the complainant had failed to prove that the domain name had been registered in bad faith.

Background

The complainant was Titoni AG, a company with its headquarters in Grenchen, Switzerland, specialised in the manufacture and supply of watches and jewellery worldwide. The complainant had used the brand Titoni since the 1950s and owned many trademarks in TITONI, including a Swiss trademark registered in 1991. The domain name had been registered in 2000 by the complainant and used for its English-language websites. It had been regularly renewed until it lapsed in 2018 due to the complainant's failure to renew it as a result of an administrative error.

The respondent, Synergy Technologies LLC, a company registered in Saint Kitts and Nevis, was a domain name dealer. It acquired the domain name by auction and used it to point to a website with pay-per-click links related to names and genealogy, such as 'Ancestry', 'Change Names', 'Family Heritage', 'Family Portrait' and 'Family Tree'.

On 15 February 2019 the complainant attempted to regain ownership of the domain name by emailing the respondent to request a transfer. To support its request, the complainant asserted trademark rights and explained that the domain name had been used for a website for many years and that the non-renewal of the registration was due to a mistake. A domain name broker immediately replied that at least $10,000 would be required to engage with the respondent.

The complainant then initiated proceedings under the UDRP. To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP, namely:

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...

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