Respondents sometimes claim to be making genuine commercial use of the domain name in dispute to prove rights or legitimate interests for succeeding against allegations of abusive domain name registration.
I will analyse in this post recent UDRP decisions at WIPO reflecting how panels address this issue, particularly cases where respondents allege they have rights or legitimate interests in the domain name for genuine commercial use in an independent business.
General aspects
To succeed in a cybersquatting case, the complainant must prove under the second element of the Policy that the respondent has no rights or legitimate interests in respect of the domain name in dispute.
As this involves proving a negative, requiring information that is often primarily within the knowledge or control of the respondent, panels agree that where a:
“complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” Section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
One of the non-exclusive defenses provided under paragraph 4(c) of the Policy that a respondent could raise is that:
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
As reflected in the WIPO Overview 3.0, section 2.2:
“non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.”
Defence of Genuine Use for Competing Business Rejected
The case concerning <leica-microsystems.com>
In a recent case at WIPO, the complainant, Leica Microsystems IR GmbH, was a Germany based manufacturer of optical microscopes, including for surgical applications. It was the registered owner of several trademarks for LEICA since 1937 and operated a website at the domain name <leica-microsystems.com>.
The respondent was an individual and a company called Leica Surgical Industry from Pakistan.
The domain name in dispute, <leicasurgical.com>, was registered in 2023 and resolved to a website “headed “LEICA SURGICAL”, which appeared to offer “Surgical Instruments”, “Dental Instruments”, “Beauty Instruments”, and “Electro Instruments”. The website homepage included an “About Us” section which appeared to comprise “lorum ipsum” text”.”
The respondent claimed to use the domain name for a Pakistani-based business called Leica Surgical Industry.
It argued it is a Pakistani company selling only instruments, not microscopes, and “we are always say to every one we Pakistan instruments company not same because we have different name LEICA SURGICAL INDUSTRY”.
The respondent also claimed that its name was an abbreviation for “Love Economic Instruments Company & Organization”, and that its logo is different from that used by the complainant.
Upon analyzing the evidence in the case, the panel did not accept the respondent’s defense and concluded:
“on balance, that any business that has been operated by the Respondent under the name Leica Surgical Industry, and the registration of the disputed domain name, were actions designed primarily to target the Complainant’s widely-known trademark and to gain an unfair advantage from the substantial commercial goodwill attaching to that trademark.”
In reaching this conclusion, the panel took into account that:
- while the respondent claims to have operated a business under the name Leica Surgical Industries since 2015, it exhibited no evidence whatsoever to support that assertion, other than two (highly similar) membership certificates dated 2023 and 2024,
- the respondent’s website still contained “lorum ipsum” text in the “About Us” section of its homepage and, while the website appeared to enable visitors to add items to a “cart”, no pricing appeared to be shown and the “cart” in fact leads to an online contact form,
- the fact that “LEICA” was said to represent “Love Economic Instruments Company & Organization” did not make sense absent further explanation,
- the respondent’s apparent concession that they “always say to every one” that they are not the same company as the complainant, which the panel considered it strongly supports the risk of a likelihood of confusion due to its similarity with the complainant’s trademark, and an inference that the respondent was likely to have had the complainant’s trademark in mind when it registered the disputed domain name.
The case concerning <ameliamatcha.com>
In a similar case, the complainant was a retailer of matcha products under the name and trademark MILIA MATCHA. It owned various trademarks for the mentioned name since July 2023 and operated its website at the domain name <miliamatcha.com>.
The disputed domain name <ameliamatcha.com> was used to resolve to a website offering matcha products for online sale.
It included product images and other materials similar to those on the complainant’s website, and made extensive use of a device “Amelia” that was similar to the complainant’s figurative trademark.
In its response, the respondent claimed it was operating exclusively in the United States and therefore, there can be no conflict with the complainant’s primarily French brand.
It also submitted that “its “Ameila Matcha” branding was derived from “personal inspiration” and was not intended to imitate or compete with the Complainant’s brand. [..] its website was designed by a third-party agency. It contends that, following receipt of the Complaint, it has taken immediate steps to modify its branding and website to avoid any resemblance to the Complainant’s brand.”
The evidence in the case file did not convince the panel.
Rather, the panel found that the domain name in dispute was registered to target the complainant’s trademark and business goodwill, because there was no cogent explanation from the respondent for its choice of the disputed domain name.
Moreover, the panel found that the respondent’s website:
“plainly imitates the Complainant’s website, including by use of the “Amelia” device which is similar to the Figurative Mark (which the Panel finds to have been used by the Complainant prior to the Respondent’s registration of the disputed domain name), similar product branding and the reproduction of additional website content.”
Defence of Genuine Use for Commercial Activity Accepted
On the other side of the story, there are cases where respondents successfully prove genuine use for commercial activity.
As an example, in the case concerning the domain name <canpackmachinery.com>, the complainant owned the trademark CANPACK and CAN-PACK as early as 2010.
It operated in the field of producing beverages and food and metal closures for food and industrial packaging and relevant services.
The respondent was the director, secretary and member of an Australian company Can Pack Machinery Solutions Pty Ltd, established in 2019, and found in liquidation at the date of the decision.
The domain name in dispute was <canpackmachinery.com> and at the date of the complaint it was used to resolve to the respondent’s website titled “CanPackMachinery”.
The panel considered that the domain name in dispute was registered in 2015, the respondent was the owner and the director of the above-mentioned company which was registered in 2019, and that prior to a notice of dispute the domain name had been continuously used for the official website of the company.
Also, the “website prominently discloses the name and contact details of the Respondent’s company and describes it in a manner that does not create a likelihood of confusion with or impersonate the Complainant.”
Moreover, in 2023, the complainant wrote to the respondent proposing a concurrent use, which the panel deemed to represent that the “[c]omplainant acknowledged the existence of the Respondent’s company and was prepared to enter into a contractual relationship with it.”
Taking into consideration all elements in the case, the panel concluded that:
“in the absence of any indicia of cybersquatting, the Panel finds no basis for a finding that the Respondent’s registration and subsequent operation of the disputed domain name and of its company have somehow targeted the Complainant or its CANPACK trademark or are somehow illegitimate. It rather appears that the Respondent has independently and legitimately registered and operated them in furtherance of its own business. The fact that the Respondent’s company is currently in liquidation does not affect the above conclusion”.
Similarly, in the case concerning the domain name <coachhubz.com>, the panel found that it is more likely than not that “prior to any notice from the Complainant the Respondent was operating a bona fide business (albeit on a modest scale) which provided a facility which enabled individuals seeking a suitable sports coach to identify and get in touch with a sports coach who might suit their needs”.
A similar decision in the case concerning the domain name <shirvanhotels.com> where the panel found that the respondent has adopted the name SHIRVAN for its hotel more than a month before the complainant filed its trademark application in Guinea, the respondent’s location, therefore there was “no basis for the Panel to conclude that the Respondent adopted the name SHIRVAN HOTEL to usurp the Complainant’s rights”.
Also, the panel in the case concerning the domain name <innoviti.com.co> established that the domain name resolved to what appeared as “a bona fide web site of an established Colombian technology company”, and concluded that before notice of the dispute to the respondent, it had used the disputed domain name in connection with a bona fide offering of goods or services.
Final Remarks
The above decisions are a good reminder that, while UDRP was not designed as a forum for solving complex trademark disputes between competing businesses, at the same time, the complainant must establish that the respondent’s business does not represent a bona fide commercial offering, rather it is operated as a pretext, to target the complainant’s trademark rights.
Therefore, complainants should include in their complaint details of how the domain name in dispute is used. When the domain name points or was used to point to an active website, complainants should argue and prove on a prima facie basis that the activity therein is not genuine.
Otherwise, complainants might be found guilty of reverse domain name hijacking, for being silent in their complaint about publicly available information on the respondent’s website, as it occurred in the case concerning the domain name <innoviti.com.co>. This could happen even in the absence of a response from the respondent.
