In a recent case under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a domain name transfer on the basis that a single instance of a sale was sufficient to show that the domain name was used in connection with abona fide offering of goods and services before the respondent in question had notice of the dispute.

The complainant was Mr Abby Heykali, an individual from London, UK, who ran an online business connecting buyers and sellers of oil, gas and metals (the “Complainant”).  The Complainant had owned a figurative trade mark for PETROMETAL.COM THE PETROLEUM & METALS EXCHANGE (the “Trade Mark”) since April 2015 in the United Kingdom.  The Complainant had also registered the domain name <petrometal.com>.

The respondents were JingRong Chen, an individual who had worked in the oil and gas industry since 1996, and his US-based company, Petro Metal Inc., which had been selling products and arranging transactions in the steel and petroleum industries since its incorporation in February 2014 (together the “Respondent”).

The disputed domain name was <petro-metal.com> (the “Domain Name”).  It was registered in February 2014 by the Respondent who used it to run an online business.

The Complainant decided to file a UDRP to obtain the transfer of the Domain Name.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

  1. the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  2. the 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.

The first part of the UDRP concerns whether the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

The Panel noted that the Trade Mark was a figurative mark which incorporated text and images other than the words “petro metal”.  Referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11, the Panel considered that, generally, as design elements are not capable of being represented in a domain name, these elements of a trade mark should be ignored for the purpose of assessing identity or confusing similarity.

The Panel determined that the dominant textual element of the Trade Mark was “PetroMetal.Com” and that “PetroMetal” was sufficiently distinctive to be capable of protection on its own.  The Panel therefore found that the Domain Name was confusingly similar to the Trade Mark.  Thus, the Complainant satisfied the first limb of the UDRP.

As far as the second requirement under the UDRP was concerned, and whether the Respondent had rights or legitimate interests in the Domain Name, the Panel noted that the parties had provided very little evidence in this respect and that neither party had provided any compelling relevant submissions regarding the Respondent’s rights or legitimate interests in the Domain Name, or lack thereof.  The Panel noted that it would have been of assistance if the Complainant had focused his submissions and considered the list of suggested example circumstances at paragraph 4(c) in order to make a prima facie argument that the Respondent had no rights or legitimate interests.

In fact the Complainant mainly argued that the Respondent’s incorporation of his company, Petro Metal, Inc., two days after he registered the Domain Name, demonstrated bad faith, since the Respondent must have known that the Complainant’s domain name, <petrometal.com> had existed for 15 years.  The Respondent in turn countered that such practice was common for start-up companies (securing their intellectual property, including domain names, before formally registering a business or company) and also that, as the Trade Mark did not exist at the time the Domain Name was registered, the Respondent could not have known of the Complainant’s Trade Mark rights at the time of registration.

The key deciding factor for the Panel was that, when contacted by the Complainant in October 2014, the Respondent’s business was already underway.  The Respondent had provided an invoice dated earlier in 2014 as evidence of this.

Therefore, the Panel stated that the single instance of a sale by the Respondent’s business was sufficient to show that the Respondent was using the Domain Name in connection with a bona fide offering of goods and services before the Respondent had notice of the dispute, as referred to at paragraph 4(c)(i) of the UDRP.

Even though the Complainant had failed to satisfy the second limb of the UDRP (and thus had lost the Complaint), the Panel decided to address the bad faith element of the UDRP, given the parties’ focus on this element.

The Complainant submitted that the content of the website at the Domain Name was the same as the content of the website of another company associated with the Respondent (PetroMaterials Corporation) and that the Respondent had changed the content of the website at the Domain Name after he was contacted by the Complainant.  According to the Complainant, this action showed that the Respondent was attempting to divert traffic looking for the Complainant’s business to its own business.

However, for the Panel, the asserted similarity of the websites of two related companies did not indicate the Respondent’s intention to divert Internet traffic from the Complainant’s business to the Respondent’s businesses. The website at the Domain Name did not divert traffic to or set out any association with the Respondent’s PetroMaterials business.

In addition, the Panel stated that the fact that the Respondent’s company was a commercial company registered shortly after the Domain Name was registered did not indicate that the Respondent was seeking financial gain at the expense of the Complainant, as argued by the Complainant.

Finally, despite the Respondent’s request in this respect, the Panel found that there was no basis for finding that the Complainant had engaged in Reverse Domain Name Hijacking (namely the use of the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name), in particular because the Complainant had a registered trade mark that was found to be confusingly similar to the Domain Name.

This decision is interesting because it shows that even a single instance of a bona fide offering of goods or services may be sufficient for a respondent to prove that it has a legitimate interest in the domain name in question and thus for a panel to deny a complainant’s request to obtain the transfer of such domain name.  However, each UDRP case must be looked at in the light of all surrounding facts and circumstances, and clearly there can be no hard and fast rules when it comes to the issue of a respondent’s rights and legitimate interests.

The decision is available here.

First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house