As a leader in domain disputes, Lexsynergy keeps a close eye on UDRP decisions, especially when a trademark owner's claim is denied.
In July 2018 the Complainant, Integrated Robotics, submitted a UDRP complaint to recover the domain integrated-robotics.com which was registered by the Respondent, a former employee of Integrated Robotics.
In its claim, Integrated Robotics stated that the domain was registered by the Respondent when he was an employee of Integrated Robotics with the company's authorization. However, when he registered the domain he used his personal name and information for the registrant details. After being fired, the Respondent retaliated by shutting off the company's access to the email addresses associated with the disputed domain name and refused to transfer the domain to the company.
The UDRP panel came to the following conclusion in relation to 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 Complainant failed to support this point because they did not assert rights in a trademark or common law for Integrated Robotics. Therefore, the panel was not able to evaluate if the domain name is identical or confusingly similar to a trademark owned by the Complainant.
Since this requirement was not met, the panel did not consider the other two elements and denied the claim. Furthermore, the panel stated that the arguments presented by the Complainant were related to Contract and Employment Law which are not applicable to a UDRP proceeding.
What lesson should be learned?
There are two key takeaways from this case. First, domains should never be registered with an employee's personal information. Ideally, domain registration details should match the trademark registration details. The registrant contact should be a generic name (i.e. Domain Administrator) and the registrant email should be a generic email in which multiple employees have access to (i.e. email@example.com). Additionally, more than one employee should have login access to manage domains. Therefore, if an employee is fired or resigns they are not able to take the company's domains hostage.
- The second takeaway is that the Complainant must be prepared
to prove all three requirements, which are:
the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith
Integrated Robotics made no attempt to prove they had any trademark or common law rights to the domain name. Lexsynergy handled a similar UDRP case for penheaven.com. We focused on the Complainant's trademark rights and how the Respondent was abusing those rights. We were able to prove all three elements and the domain was transferred to the Complainant. Overlooking rights to a mark sounds obvious but this does happen relatively often. This includes arguing aspects not governed under the UDRP.
The UDRP gives you one shot to get it right so make sure each element is supported by sufficient evidence and relevant arguments.