In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the National Arbitration Forum (NAF), a panel ordered the transfer of a domain name although registration of the domain name predated filing of the trade mark application.

The Complainant was Party Bus MN, LLC., a company that provided transportation services for weddings, clubbing, birthdays, proms, corporate events, concerts, and tours.  The Complainant was the owner of the trade mark RENT MY PARTY BUS in the United States of America.  The Complainant’s trade mark in RENT MY PARTY BUS was filed on 25 November 2014 and registered on 28 July 2015.   The Complainant allegedly first used its RENT MY PARTY BUS trade mark on 31 December 2002.

The disputed domain name was <rentmypartybus.com> (the “Domain Name”).  It was registered in October 2008 by the Respondent who used it to resolve to a website which offered essentially the same services as those provided by the Complainant.

The Complainant decided to file a UDRP to obtain the transfer of the Domain Name.  The Respondent failed to file an actual response and only submitted two exhibits showing that proceedings had been initiated against the Complainant in the United States District Court for the District of Minnesota.

The Panel noted that it had no obligation to take those documents into account in reaching its decision but decided, in this case, to read and take limited notice of certain claims contained therein in order to assess whether (i) the Complainant filed the Complaint in good faith; (ii) the dispute was within the scope of the Policy; and (iii) the Panel should suspend or terminate the UDRP proceedings in consideration of the Court proceedings.

The Panel found that it had a proper mandate to decide the matter for the following reasons:

  • The UDRP could be applied to the facts presented to the Panel;
  • The Court proceedings were initiated less than two weeks ago and the Court may take months to issue a decision;
  • The Respondent was not a party to the Court Proceedings; and
  • The cause of action in the Court proceedings would not determine the ownership 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.

Given the Complainant’s trade mark registration, the Panel found that the Domain Name was identical to the trade mark.  The Panel noted that the consensus opinion of prior UDRP panels is that registration of the disputed domain name prior to the filing date of the trade mark registration is irrelevant for the purposes of paragraph 4(a)(i) of the UDRP.  Therefore the Panel concluded that the Domain Name was confusingly similar to the Complainant’s trade mark.

The second limb of the three prong test requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the disputed domain name.
Without a Response from the Respondent, the Panel relied on the Complainant’s undisputed representations, namely that:

  • There was nothing to indicate that the Respondent might be known by the Domain Name.
  • There was no evidence that the Complainant had authorized the Respondent to use the trade mark and the Complainant denied having granted any such authorization.
  • There was no evidence of bona fide use of the Domain Name since it resolved to a website advertising competing services.

The Panel found that the Complainant had established a prima facie case.

Due to the Respondent’s failure to respond and the Complainant’s claim to common law trade mark rights through use since 2002, the Panel saw no reason to infer that the Respondent had made prior bona fide use of the trade mark thus giving it rights or interests.
Furthermore, the Panel found that unsupported and unexamined claims made in another action, i.e. the proceedings before the Minnesota Court, provided as exhibits by the Respondent, should not stand in the place of a formal response in UDRP proceedings.

The Panel concluded that the Respondent had no rights or legitimate interests in the Domain Name.

Turning to the third requirement, a complainant must demonstrate that the respondent both registered and used the disputed domain name in bad faith.

The Panel found that the Domain Name was registered and used in bad faith for the following reasons:

  • The Domain Name was identical to the Complainant’s trade mark and thus there was a likelihood of confusion with the latter as to the source or affiliation.
  • The resolving website existed for commercial gain.

The Panel therefore found that all three requirements of the UDRP were met and ordered the transfer of the Domain Name to the Complainant.

This outcome could perhaps have been avoided if the Respondent had filed a Response to the UDRP complaint arguing for example that its registration of the Domain Name could not have been in bad faith because it was not aware of the Complainant’s common law trade mark rights when it registered the Domain Name.

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.