WIPO – Riyadh Al-Balushi

While we are still on the topic of the UDRP, I thought I’ll share with you an example of a local experience with the UDRP, and will show you an example of a classic case where the UDRP could be used.

BankSohar.com

Some of you might remember that when Bank Sohar launched its website it was hosted at a .net TLD and not the current .com TLD. This was obviously because someone registered the domain name before they did.

Late in 2008, Bank Sohar initiated a UDRP action against the website owner. Under the UDRP a domain name will be transferred to a TM owner if

the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
the registrant 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.

In the action handled by AlBusaidi, Mansoor Jamal & Co (which was then Al Alawi, Mansoor Jamal & Co) the complaint claims and arguments consisted of the following:

A. Complainant makes the following assertions:

1.Respondent’s domain name is identical to Complainant’s BANK SOHAR mark.
2.Respondent does not have any rights or legitimate interests in the domain name.
3Respondent registered and used the domain name in bad faith.

The domain name registrant did not respond to UDRP process, yet the panel decided in his favour, because the domain name was registered before the trademark of Bank Sohar was registered. The complaint was denied. But it seems that the Bank Sohar later settled (they paid them) with the domain name registrant to get the domain name which it currently uses.

Though not a clear cut case, because the domain name was registered before the trademark was registered, it is apparent that the complaint was not defended well (I mean, out of the 15 page limit they had, Bank Sohar submitted three lines?!).

First of all, under WIPO UDRP decisions for the purposes of answering element 1, there is no requirement for the trademark to be registered before the domain name for similarity to be established, the registration day is a factor to be considered in the third element. Bank Sohar would have easily satisfied that element by citing this decision Digital Vision, Ltd. v. Advanced Chemill Systems:

“The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i)”.

For the second element, Bank Sohar was required to establish that the registrant did not have any legitimate interests in the domain name, this is established by stating that the registrant does use the domain name in a bona fide business and that the registrant is not known by that name, both of which are easy to establish, he is obviously not known by the name Bank Sohar nor does he use it in a business context.

The third element is the hardest to establish, because Bank Sohar had to establish that the registrant registered the domain name and is using it in bad faith. The problem here is that Bank Sohar registered its trademark and started its business after the domain name was registered, however, in cases where the the registrant knew of the existence of the complainant and it was clear that he registered to take advantage of the domain name later, then bad faith can be established. This was the bases by which a transfer took place in cases such as ExecuJet Holdings Ltd. v. Air Alpha America, Inc. I don’t think that it is hard to establish that many people knew about the Bank Sohar a year before it started doing actual business!

Bank Sohar lost this procedure because it did not argue its right at all. The choice of UDRP provider was also bad as WIPO clearly holds the cases I cited above as the majority view and it have been more likely for Bank Sohar to win this if WIPO was used as a provider instead of the National Arbitration Forum. No idea how much they had to pay for the domain name afterwards!!

You can read the decision text here.

OmanAir.com

Unlike the Bank Sohar case, the second part of this post is not about a case that happened, but about a cybersquatting example which can be easily won through the UDRP.

Again, some of you might remember when Oman Air used to have a website at the .aero TLD, it currently uses the oman-air.com TLD as its web address as well nowadays. The most desirable TLD though, omanair.com, is registered by a Sri Lankan since 2002. The domain is parked.

This is a classic UDRP case at which it is guaranteed that Oman Air can gets its domain back. If Oman Air wants to get the domain it has to establish in a UDRP procedure the following:

the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
the registrant 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.

In regard to the first element, the trademark is identical to the trademark owned by Oman Air, the location of the service and place of registration is irrelevant (case Guinness.com), if Oman Air did not have a registered trademark at that time it can establish that it had a common law trademark as Oman Air was commonly known by that name by 2002 (case: IdeaLeage.com).

In regard to the second element, it can be easily established as the registrant is not known by that name, not does not carry out any bona fide business using that domain name.

In regard to the third element, it is clear that the registrant registered the domain name to profit from the Oman Air’s trade mark, lack of usage has been considered an indication of bad faith (recent case example).

All in all, this case is a classic UDRP example which Oman Air can easily win if it uses the procedure.

Oman Air would be stupid to let somebody else take control of their domain name, the costs for using the UDRP are nominal (WIPO it costs $1500 while at NAF its $1300), and there is not to do it!

Other interesting decisions from the region include aljazeera.com and ebay.ae.

(Photo credits: vaXzine)

Many of you are probably aware of cybersquatting, it is an act by which someone registers a domain that includes a trade mark of another person in hope of reselling it at a profit to the trade mark owner or just harming him somehow. One of the obvious solutions to this problem is to take court action against the cybersquatter, but this is not always possible when you do not have enough funds to litigate or if the cybersquatter is a resident of another country. The Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for generic top level domain names (gTLDs), introduced in 1998 a powerful procedure called the Uniform Dispute Resolution Policy (UDRP) which lets a rightful trade mark owner transfer the domain to himself without having to resort to court.

The UDRP may cost as little as $1000 and can be used by trademark owners from anywhere in the world against cybersquatters found in any country as long as the case involves a gTLD such as .COM, .NET, and .ORG. All domain name registration contracts include a clause that allows the domain name regisrar to transfer the domain name to another person if the a decision was made with that effect through the UDRP.

UDRP can be carried out by a number of providers approved by ICANN, the most popular of these is WIPO. You do not need to travel to apply to use the procedure provided by any of these providers and all you have to do is mail then documents they need.

If you have been approached by a cybersquatter, you may wish to use the UDRP instead of succumbing to the demands of the cybersquatter or resorting to litigation as long as the domain in question is a gTLD (e.g. .COM). In order to succeed in under the UDRP you have to establish the following:

The domain name is identical or confusingly similar to a trademark in which you have rights.
The domain name registrant does not have any rights or legitmate interests in respect of the domain name; and
The domain name has been registered and is being used in bad faith.

The UDRP was created to address blatant cases of domain name cybersquatting, so if a domainer simply bought a domain name that includes your trade mark just in hope to sell it back to you at a profit then that is a classical UDRP case, however, the issue might not be as obvious when there are competing rights such as the case where a person genuinely uses a domain to trade under his own business or when that person is using the domain name to criticise the trade mark owner’s business.

If you think you can easily prove the requirements above then you should use the UDRP to stop the cybersquatter and get that domain. Using the UDRP is pretty simple, to use it you first have to select which provider to go to from ICANN’s list of approved providers, the prices of these differ and each of them have some additional rules for the procedure. Once you select the provider you will have to provide a written complaint specifying the reasons why you think the domain name is identical, why you think that the registerant does not have any rights or legitimate interests in respect of the domain name, and then why you think that it is was used in bad faith.

The burden of proof is on you in regard of all the items mentioned above as long as the evidence to establish these is not difficult to retrieve, in that case you can make it clear to the provider that you cannot acquire the evidence you need and just submit all the information you have. When submitting this application, you may decide to have a three member panel instead of the default one member panel to examine to your case. If you make that decision you will have to pay additional costs for the extra panel members, otherwise you will just have to pay for a single panelist.

Once your complaint is made, WIPO or any other provider you choose will contact the domain owner, he will have 20 days to submit a response. If you have not asked for a three member panel, the respondent may ask for it, if he does, he will have to pay for one of the panelists and you will have to pay for two. However, most cases are in fact just examined by a single panelist.

The panel will then look into the submissions and make a decision accordingly, upon reaching a conclusion, the panel may order to have the domain name suspended, transferred to you, or simply refuse the complaint. If the panel thinks that you have made the complaint in bad faith it might make a statement of reverse domain name hijacking (RDNH) which could limit your chances of applying for a UDRP in the future.

If the panel decides in your favor, the domain name registrar will have 10 days to transfer the domain to you (or suspend it depending on what you asked for) EXCEPT if the respondent goes to court within that period, but this is very unlikely because of the high costs associated with it especially when the parties are located in different countries.

The UDRP is one of the most powerful and effective dispute procedures found online because it is fast, cheap, and self-executing as it does not require going to court or any eforncement agency to actually make the transfer because the registrar (and not just the respondend) is bound by his contract with ICANN to enforce the decision.

It is worth noting that, unlike the court litigation, it is not possible to acquire any sort of damages through the UDRP. If this is what you seek, then you will have to go to court.

Many criticise the UDRP for its inconsistent decisions, lack of an appeal system, short time limits which are unfair to respondents, and theits unfounded expansion into areas of personal names and geographical names which were never inteded to be within its scope.

It is worth noting that disputes relating to the .OM ccTLD are expected be governed through a slightly amended UDRP that will only be provided by WIPO. This was mentioned in the public consultation paper concerning the .OM framework issued by the TRA a number of months ago.