As a leader in domain disputes, Lexsynergy keeps a close eye on UDRP decisions, especially when a trade mark owner's claim is denied.
In April 2018 Bloomberg Finance L.P. submitted a UDRP complaint to recover the domain bloombergmortgagetradecentre.com which was registered by the Respondent, a British citizen, in February 2018.
In its claim, Bloomberg contended that the Respondent registered and was using the domain in order to trade upon Bloomberg's global reputation. They go on to state that the"Respondent cannot claim a right or legitimate interest in the Domain Name based on the notion that it has used the Domain Name or a corresponding name in connection with a bona fide offer of goods or services."
The Respondent claimed to have been in business in the U.K. providing financial advice since October 1993. He had used the trade name "Bloomberg Mortgage Trade Centre" under licenses from the U.K. Financial Conduct Authority (FCA) and the U.K. Information Commissioner Office (ICO) before the BLOOMBERG mark was recognized as well-known.
The UDRP panel came to the following conclusion in relation to each of the three requirements for a successful UDRP complaint:
Requirement: the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Decision: The panel found that "confusing similarity exists where a disputed domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase" and that bloombergmortagetradecentre.com was confusingly similar to the Complainant's mark.
Requirement: Respondent has no rights or legitimate interests in respect of the Domain Name
The UDRP decided in favour of the Respondent. So where did it go wrong? It was the second element of the UDRP, namely that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The panel found that the Respondent did have a legitimate interest in respect to the domain name based on the fact that the Respondent had been trading under the name "Bloomberg Mortgages" since 1993. The Complainant's first trade mark was not filed until 1998 and was not recognized as well-known until 2004. This chronology shows that the Respondent had a bona fide offering of services and had established a legitimate interest in the domain name.
Since this requirement was not met, the panel did not consider the final element that the domain name had been registered and was being used in bad faith.
What lesson should be learned?
Don’t rush off and file a UDRP complaint merely because you have a trade mark registration. A trade mark only gets you passed the first hurdle, you then have to prove that the second element as mention above and then the finally the third element that it was registered and used in bad faith.
The first and second element require doing some homework on the Respondent by determining whether they may have prior rights (common law or otherwise) in their jurisdiction and whether your rights extend to the Respondent’s country or region. In summary, know who you are dealing with.