Recent UDRP decisions show that respondents sometimes rely on corporate names to prove rights or legitimate interests in a domain name to succeed against allegations of abusive domain name registration. This post discusses recent solutions of panels addressing such defence by respondents relying on corporate names.
Comment
To succeed in a UDRP complaint, and obtain transfer or cancelation of an abusively registered domain name, the complainant must prove three elements, as described in a previous post. The second element that the complainants must fulfil is that the holder of the domain name in dispute has no rights or legitimate interests in respect of that domain name.
One of the possible defences that respondents could raise under the second element is that their corporate name matches the domain name in dispute. This defence would aim at demonstrating that the respondent is commonly known by the domain name (under article 4(c)(ii) of the Policy), or that it is making a bona fide offering of goods or services (under article 4(c)(i) of the Policy), or both.
The ways in which panels deal with such defences is briefly outlined below, with a focus on recent UDRP decisions.
No Rights or Legitimate Interests for Opportunistic Company Registration
Generally, panels consider that a mere registration of a company does not in itself confer rights or legitimate interests to the respondent to register the domain name in dispute. The overall circumstances of the case would be relevant to the assessment by the panels.
If the circumstances of the case point to the fact that a company was registered to circumvent the application of the Policy, the complainant would succeed in its UDRP complaint, even though the respondent would have registered a company with a similar name to the domain name in dispute.
A recent example of cases where the defence of the respondent, in the informal response that it submitted was not upheld, is in the WIPO case no. D2022-2501, concerning the domain name <freemontmsa.com>. The domain name was used for a website offering similar services to those of the complainant. The complainant Freemont Management SA (Switzerland) obtained transfer of the domain name despite allegation by the respondent of having registered a company in the United Kingdom under the name Freemont Management SA Ltd.
The circumstances of the case showed that the respondent’s company was registered more than a year after the registration of the domain name in dispute and after the complainant initiated criminal proceedings against the respondent. Also, the case file showed that the respondent’s website at the disputed domain name had falsely identified the complainant as provider of the services on the respondent’s website and the information remained in the respondent’s terms of use agreement on the website. Under the circumstances, the panel could not conclude that the respondent had rights or legitimate interests in the domain name based on the corporate name registration.
In another recent example, the panel analysed under the second element the fact that the website at the domain name in dispute stated that the respondent is a “Scotland registered Company” and provided a link to what appeared to be a certificate of incorporation of a company in Scotland and Wales under the name “Blockfitrade”. The trademark relied upon by the complainant was “BlockFi”, and the domain name in dispute was <blockfitrade.com>.
The panel’s search revealed that the online register does not confirm such company registration (also there is no registrar for Scotland and Wales and the reference to a certain section of the Companies Act on the certificate of incorporation was not correct). The respondent was invited to address these findings, but had failed to respond. The panel proceeded on the basis that the certificate of incorporation was false and there is no company of the respondent, and concluded that the complainant has succeeded in its case under the second element.
In another recent case (WIPO case no. 2021-4018 concerning the domain name <cxone.com>), the respondent relied on the corporate name of its company CX One Sdn. Bhd, registered in Malaysia, and argued it does not violate the complainant’s CXONE trademark. The panel disagreed, as the company was incorporated three days before the registration of the disputed domain name and there was no evidence that “the company incorporated by the respondent [..] was commonly known by such name (for example, as an entity pre-incorporation and without any indication that it was trading off the complainant’s reputation)”. The panel also considered that the respondent was not making a bona fide offering of goods or services, as the respondent failed to demonstrate that it has a genuine trading business and to explain the similarities between the parties’ websites.
Similarly, the panel found in case no. D2022-0376 concerning the domain name <senwesgroup.com> that the respondent cannot claim to be commonly known by the disputed domain name and hence has no rights or legitimate interests, as the circumstances of the case indicated that the respondent adopted the name “Senwes Group” specifically to take unfair advantage of the complainant’s rights.
As such, the panel took into account that the complainant’s business was established over 100 years ago, that the respondent used the disputed domain name to offer some of the same kinds of goods as the complainant although there was no obvious connection between the disputed domain name and those goods. The panel also considered that “the Respondent stopped using the disputed domain name after being confronted by the Complainant; the Complainant has provided evidence that at least one of the business addresses used by the Company is false (for example, the address shown on the website at the disputed domain name); and there has been actual confusion on the part of at least two of the Company’s customers who thought they had been dealing with the Complainant.”
A similar solution in the WIPO case no. D2021-3458 where the name of the corporate respondent included the NORTON trademark of the complainant. The circumstances of the case pointed to an apparently opportunistic registration of companies by the respondent comprising the complainant’s trademark within couple of days around the registration of the disputed domain names.
Another example can be found in the WIPO case no. D2021-2187, concerning the domain name <marlboro-group.com>, where the respondent relied on a company incorporation in United Kingdom for Marlboro Group Ltd, which the panel found to be made to circumvent the UDRP, considering the circumstances of the case. The panel took the view that such incorporation “cannot be bona fide and cannot support a claim of rights or legitimate interests”, similarly with the situation of respondent-owed trade marks, as stated at section 2.12.2 of the WIPO Overview 3.0.
The aspect of a corporate registration by the respondent was also analysed by panels in the above cases under the third element of the Policy, to conclude that the company incorporation proves the respondent was aware of the complainant and has sought to take advantage of its trademark.
Rights or Legitimate Interests Deriving from Corporate Name
On the other hand, if the circumstances of the case do not point to the fact that a company was registered to circumvent the requirements of the Policy, a complainant’s claim would be rejected.
A recent example is in the WIPO case no. D2022-2070 concerning the domain name <cheynegroup.com>, in conflict with the trademark CHEYNE used by the complainant for investment management services. Although the respondent has provided no formal answer, its name, as listed in the Registrar’s records, was “cheynegroup”. Informal communication from the respondent revealed that a company called The Cheyne Group, LLC was incorporated some 12 years ago, and that the corporate name derived from the personal name of its founder.
The panel found no suggestion that the respondent’s company was not a legitimate one. The complainant did not address the issue in the complaint or in response to a procedural order by the panel. Under such circumstances, the panel decided that the complainant has failed to succeed in proving the second element of the Policy, as the respondent had rights or legitimate interests in the domain name in dispute.
The issue was considered relevant under the third element of the Policy as well, and the panel did not find that the domain name was registered in bad faith, as:
“[..] even if the Respondent was aware of the Complainant (which the Panel considers to be unlikely), the Panel is of the view that the Respondent registered the disputed domain name because it is the Respondent’s corporate name, and that the corporate name was selected because it is the name of its founder, Mr. James Cheyne.[…]”
Decision in WIPO case no. D2022-2070
A similar solution in the WIPO case no. D2022-0973 concerning the domain name <man.energy>. The respondent relied on the corporate names of its entities, that included the trademark MAN relied upon by the complainant. The panel held that even if “the complainant and its corporate group have been using the MAN trademark for many years prior to any of the respondent’s companies”, “man” is a dictionary term and could be an acronym for different things. Moreover, the panel considered that the respondent was using the domain name in dispute, as well as other domain names including “man” for many years and in a different sector of trade to the complainant. Under all circumstances of the case the panel concluded that the respondent has rights or legitimate interest under paragraphs 4(c)(i) and (ii) of the Policy.
