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Case Decisions Under the UDRP

We have been receiving lots of inquiries about the exact way in which UDRP panelists process their cases, so in this post we will try to shed some light on this matter.

The first thing panelists do is to make sure that all the technical formalities of the process are met. Only then the panel can proceed with reviewing the UDRP complaint, the response along with any evidence submitted, and decide whether the complaint meets the three UDRP requirements.

The first URDP requirement is that the domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Even though this may seem quite simple to you, there are some major issues that need to be examined. In some cases it is indeed very easy to determine when a domain name is identical to a trademark, as in the UDRP case regarding Things get complicated for (two o’s) though. A panel awarded the latter domain name be transferred to Microsoft because of it being both phonetically and visually the same as Microsoft’s trademark. Even though a great number of case decisions concluded non-identical domains to be “confusingly similar,” it is sometimes not very clear how exactly a panel jumps into such decisions. In another cases a WIPO panel did not find confusing similarities with and AOL were not awarded that domain name. Even though many people associated with AOL, the WIPO panel in this case thought otherwise. It is obvious that WIPO panelists are somewhat subjective, but that is to be expected. WIPO’s decisions are still deemed authoritative and conclusive.

We also need to outline the importance of proper trademark management. This is directly connected with another complicated issue in this first UDRP requirement, that is to determine whether the complainant “has rights” in a trademark or service mark. Here is an example. Let’s say Norbac Labs Inc. file a complaint in regards to WIPO panelists check with the U.S. Patent and Trademark Office and find that NORBAC LABS is indeed a registered trademark, however the owner is Norbac Inc. WIPO panelists refuse to award to Norbac Labs Inc. because the officially listed trademark owner is a different legal entity.

The second UDRP requirement is that the respondent have “no rights or legitimate interests in respect of the domain name”. There are three main points considered by the WIPO panelists. If any of the points listed below is present, the respondent prevails:

  • before any notice to the Respondent of the dispute, the Respondent’s 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; or
  • the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
  • the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The third UDRP requirement is whether the domain name “has been registered and is being used in bad faith”. Any of the following is evidence of bad faith:

  • circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
  • the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
  • the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

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