As a leader in domain disputes, Lexsynergy keeps a close eye on UDRP decisions, especially when a trademark owner's claim is denied.

In May 2018 the Complainant, Citigroup Inc., submitted a UDRP complaint to recover the domain which was registered by the Respondent in October 2016 and used as a local online marketplace. 

Complainant's Arguments
In its claim, Citigroup stated that the domain was confusingly similar to their mark 'CITI', the Respondent had no rights or legitimate interest in the domain and the Respondent used the domain to capitalize on the goodwill of the CITI mark to offer services in direct competition with Citigroup's business. 

The UDRP panel denied the claim because it determined the Respondent had a bona fide offering of goods or services and their offering was not in direct competition with the Complainant. The panel stated "A review of Respondent’s resolving “marketplace” website shows that Respondent offers products and services completely distinct from those offered by Complainant."

What lesson should be learned?
Sufficient research is a critical part of winning a UDRP case. Having a trade mark only gets you so far. Complainants must be able to prove all three requirements, which are:

  1. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. Respondent has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

Lexsynergy's Brand Protection team does a full case evaluation prior to submitting a UDRP complaint. This includes doing some homework on the Respondent and determining whether or not they are using the domain for a bona fide offering of goods or services. We ensure our clients go in with the best chances possible by doing the necessary legwork and research.