In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name that was acquired by a domain name trader on the basis that there was no evidence of bad faith registration.

The Complainant was Robin Food B.V., a company based in the Netherlands specialised in offering private label baby food products to retailers in the European Union and China since 2004. The Complainant claimed to have unregistered (or common law) rights in the name “Robin Food” in connection with its business activities and appeared to hold a 70 per cent market share in baby food supermarket private and trade labels in the Netherlands.   It further contended that it had acquired trade name rights under Dutch law in the name Robin Food. The Complainant also operated its website at www.robinfood.biz where it promoted its business and offered its products.

The Respondent was Bogdan Mykhaylets, an individual based in Ukraine, who appeared to be a domain name trader with a portfolio of over 1,000 domain names.

The disputed domain name <robinfood.com> (the “Domain Name”) was first registered on 8 June 2004.  It was acquired by the Respondent in an auction on “snapnames.com” on 17 July 2013. Since then, the Domain Name had been used to resolve to a website containing pay-per-clicks, including food-related links.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:

  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

As regular readers of Anchovy News will know, the first requirement under the UDRP is two-fold, and requires a panel to assess, first, whether a complainant has relevant trade mark rights, regardless of when or where the trade mark was registered (although these factors may be relevant for the purpose of the third limb under the UDRP, mainly bad faith registration) and, secondly, whether the disputed domain name is identical or confusingly similar to a complainant’s trade mark.

In the present case, the Complainant did not rely upon any registered trade marks but rather claimed unregistered trade mark rights by reason of its activities.  Paragraph 1.7 of the WIPO Overview 2.0 provides that in order to successfully assert unregistered or common law rights: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction.”  The Panel noted that the Complainant, who was based in a civil law jurisdiction, relied upon the last sentence in this quote to justify its claim that it had unregistered trade mark rights, even though it did not appear to do any business in a common law jurisdiction.  However, the Panel considered that this issue must be carefully considered and so then went on to examine the case law regarding common law rights invoked by complainants based in civil law jurisdictions, namely Antonio de Felipe v. Registerfly.comWIPO Case No. D2005-0969  and S.N.C. Jesta Fontainebleau v. Po SerWIPO Case No. D2009-1394.

The Panel noted that in Antonio de Felipe v. Registerfly.com, supra, the panel had found that unregistered trade mark rights “derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country“.  The panel in that case also held that “any complainant claiming unregistered trademark rights would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademarks rights in that jurisdiction. This is particularly so if relevant unregistered rights in that jurisdiction have not been unambiguously recognised in previous UDRP decisions.”

The Panel then noted that S.N.C. Jesta Fontainebleau v. Po Sersupra, was the only other decision addressing unregistered trade mark rights in a civil law jurisdiction.  In that case, the panel held that “Given the global nature of the domain name system and the international nature of much of the world’s trading activity, it is entirely possible that a complainant that is physically located in a particular civil law jurisdiction could nonetheless establish common law trademark rights outside that jurisdiction by virtue of its international (including on-line) operations”.However, in that case, given that that the complainant had not provided any evidence to enable the panel to make such a finding, the panel turned to the jurisdiction in which the complainant was based (France) and found that French law afforded the complainant comparable rights to those available at common law by way of unfair competition law.

The Panel in the present case agreed with the panel’s approach in S.N.C. Jesta Fontainebleau v. Po Sersupra and held that “the point remains that a claim based on trade mark rights is one that must at least have some foundation in domestic law. Panelists are likely to strive towards a conclusion, and are likely to be persuaded, where a complainant’s activities would result in unregistered trade mark rights in a common law jurisdiction, such equivalent activities elsewhere would result in rights that are also recognised as trade mark rights for the purposes of the Policy. But there must be at least something under domestic law that is capable of serving that purpose”.

The Panel then went on to examine the circumstances of the case at hand and held that the Complainant appeared to be claiming unregistered trade mark rights “in the abstract” and also referred to trade name rights under Dutch law.  However the Panel found that it was not necessary to make a finding in this regard in light of the Panel’s findings as far as bad faith was concerned (as discussed below), although the Panel acknowledged that it was likely that the Complainant would have satisfied the first requirement had the Panel requested further information from the Complainant.

Turning to the second requirement under the UDRP, and whether the Respondent had rights or legitimate interests in the Domain Name, the Panel also found that in view of the Panel’s finding regarding bad faith, it was not necessary to consider the issue of rights or legitimate interests. As for the third requirement under the UDRP, the Panel found that the Complainant had failed to demonstrate that the Respondent had registered the Domain Name in bad faith. The Panel found that the Complainant did not make any real attempt to explain that the Respondent was aware of the Complainant’s use of the term “Robin Food” for its business and that it acquired the Domain Name with the intention of taking advantage of that use.  The Panel also underlined that although the Complainant appeared to be a successful business in its field, it did not claim to be well known (a “household name”) in its country or in the territory where the Respondent was located. The Panel also pointed out that the Complainant did not assert nor demonstrate that that the Respondent would have likely become aware of the Complainant’s use in the term Robin Food had he conducted an internet search. The Respondent had stated that he decided to purchase the Domain Name as it seemed a very “attractive domain for the food industry being very close to sounding to the worldwide known Robin Hood character who has positive meaning in literature which makes the term ‘Robin Food’ in the .com extension extremely cool and has kind appeal”. Although the Panel was skeptical of the Respondent’s express reasons for purchasing the Domain Name, the Panel did not discount the explanation as being so implausible that it was likely to be untrue, given that those were the same reasons given by the Complainant for adopting that name for its business.  Furthermore, although the Respondent had a large portfolio of domain names, the Complainant did not contend nor demonstrate that they were abusive registrations.  The Complainant had cited as an example the domain name <cindywilliams.com>, the name of a relatively well-known American actress.  However, the Panel found that “the Complainant has not sought to put forward any argument to this effect on the basis of that registration. If the Complainant has decided not to construct its case in this fashion for whatever reason, it is not for the Panel to reformulate its case for it in this regard“.  Finally, the Panel noted that the Complainant had put forward evidence that another Dutch entity appeared to have registered “Robin Food” as a trade mark, which did not help the Complainant’s case.

Given this, the Panel found that the Complainant had failed to demonstrate that the Domain Name was registered in bad faith. As the third requirement is conjunctive (registration and use in bad faith), it was not necessary for the Panel to examine whether the Respondent had used the Domain Name in bad faith.

The Panel, therefore, denied the transfer of the Domain Name to the Complainant.

This decision thus highlights that complainants seeking to rely upon unregistered trade mark rights must provide adequate evidence to support their claim, especially when they are located in a civil law jurisdiction.  The decision also highlights that it is essential for complainants to demonstrate that the respondent was likely aware of their rights, whether registered or unregistered, at the time of registration of the domain name in question in order to be able to prove bad faith registration.  Given that this task may often prove difficult, especially where the registrant is based in a different country, as is often the case in domain name disputes, complainants are well advised to carefully consider this issue.

The decision is available here.

First published on Anchovy News