September 14, 2021

Do your homework before pouncing on a UDRP (domain complaint)

It May Sound Like Your Cat, But That Doesn't Mean You Will Win A UDRP Complaint

The UDRP is intended to provide trade mark holders with an efficient and cost-effective forum to recover domains that infringe upon their trade marks.

The efficiency of the UDRP does not mean that a trade mark owner can file a complaint without first doing their homework into the Respondent and its activities.

Puma, the international footwear and apparel company, found out the hard way in Puma SE v Puma, Exports Pvt Ltd (D2021-1757).

An Indian manufacturer and exporter who makes small leather goods, such as wallets and passport covers registered the domain pumaexports.com on 2 September 1998. It did not use the mark “PUMA” on its products but as part of its company name.

The Respondent had used the word Puma as part of its company names since June 1990, updating it to Puma, Exports Pvt Ltd in March 1996.

To be successful in a UDRP Complaint, the Complainant must prove all three elements below:

  1. The domain is identical or confusingly similar to its trade mark;
  2. The Respondent has no rights or legitimate interests in the domain; and
  3. That the domain was registered and used in bad faith.

The Case

Proving the first element was straight forward but the Complaint came unstuck at the second and third elements.

The onus to prove the second element falls on the Complainant, which it failed to do. The Complainant appears to have overlooked the Respondent’s use of the mark on its website, as a company name and other evidence proving that it had been commonly known by the domain.

The Complainant also failed on the third element as it was conceivable that the Respondent did not intend to take advantage of the Complainant and its reputation. The Panelist listed six possible reasons why it was not bad faith:

  1. “puma” is a type of animal, a large cat.
  2. The Respondent is not selling PUMA branded leather goods.
  3. The Respondent is not selling sports apparel or footwear.
  4. The Respondent’s logo and trade dress is completely different to that of the Complainant.
  5. The Complainant’s Indian trademark registration does not appear to cover the Respondent’s goods.
  6. The Complainant did not enter the Indian market in a significant way until 2005.

The Respondent successfully raised the argument that “This is not a case of cybersquatting, while the Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes.”

The Respondent also argued that the Complainant was engaged in Reverse Domain Name Hijacking (RDNH), meaning that the complaint was brought in bad faith to try and deprive the Respondent of its domain.

The Panelist stated that “the Complainant is entitled to enforce its trademark rights and to push the penumbra of its protection, but the Complainant is not entitled to file a misleading complaint”.

The Panelist then went on to cite several incorrect and misleading statements, which highlights the dangers of template arguments that are often found in UDRP complaints. The most prominent misleading statements were:

“There are no honest business activities carried out by the Respondent through the nearly identical/deceptively similar domain name.”

“The Respondent’s choice of domain name is clearly fraudulent and with complete knowledge that such adoption is unauthorized.”

The Panelist concluded by finding the Complainant guilty of RDNH and closed with a pertinent statement “A complainant should have clear evidence before alleging dishonesty or fraud, there is no such evidence here”.

Summary

A cat or puma has 9 lives but in the UDRP you have 1 so make sure you have thoroughly investigated your opponent before filing a domain complaint. Guard against template or generic statements.

The reason Lexsynergy has a 100% success rate in domain complaints, worldwide, is because we take the time to assess the potential infringer’s rights to avoid the situation that has scared a PUMA.

Read the full decision here: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1757