In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a three-member panel denied the transfer of a three-letter domain name, even though it identically reproduced a complainant's trademark, because the domain name had been registered years before the complainant acquired trademark rights and the complainant failed to demonstrate that the respondent was aware of those rights.

Facts

The complainant was Color Image Apparel, Inc, a California-based company specialising in yoga clothing and accessories. The complainant was the owner of Trademark 3,310,551 for the figurative mark ALO, registered on October 16 2007 – and first used on May 23 2006 – with the US Patent and Trademark Office in connection with Class 25 goods (clothing). The complainant's website was available at www.aloyoga.com (the domain name 'aloyoga.com' having been registered on September 29 2008), where it distributed its apparel under the ALO trademark.

The respondent was Whois Privacy Services by DOMAINCA, a privacy service based in South Korea, and the underlying registrant, United Europe Consulting, a company also based in South Korea.

The disputed domain name was 'alo.com'. It was originally registered in 1995 and was acquired by the respondent on December 17 2003. It pointed to a website displaying pay-per-click links relating to a variety of goods and services including web security, web hosting and design, software, home electronics, television and multimedia.

Decision

To be successful under the UDRP, a complainant must demonstrate each of the following cumulative requirements:

  • The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark to which the complainant has rights;
  • The respondent 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.

With regard to the first requirement under the UDRP, the complainant had supplied evidence of a figurative trademark and the panel found that the textual element 'alo' was recognisable and prominent in the trademark. Therefore, it found that the complainant had established relevant rights in accordance with paragraph 4(a)(i) of the UDRP. The panel also noted that the domain name identically reproduced the complainant's ALO trademark, with the addition of the generic top-level suffix '.com', which is commonly disregarded when assessing identity or confusing similarity.

The panel therefore found that the domain name was confusingly similar to the complainant's trademark, in accordance with Paragraph 4(a)(i) of the UDRP.

With regard to the second requirement under the UDRP – whether the respondent had rights or legitimate interests in the domain name – the panel examined a number of factors. First, it noted that that the domain name had been registered several years before the complainant filed its trademark. Further, the panel examined the nature of the domain name itself, which consisted of a three-letter term (and, as such, may have a number of meanings, representing an acronym or a generic term) as well as the nature of the website to which it resolved – namely, a parking page containing sponsored links that made no reference to the complainant or its products. The panel also noted that the respondent's use of the domain name was consistent with its business model, whereby it had registered several other three-letter domain names which also resolved to parking pages.

Paragraph 2.10.2 of the WIPO Overview 3.0 states that:

"for a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent's evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant's mark."

Taking into account the above, the panel found that the complainant had failed to show that the respondent was targeting the complainant. The panel also found that the respondent's explanation for its registration and use of the domain name was sufficient to establish a legitimate interest in the domain name that did not capitalise on the complainant's reputation and goodwill.

The panel therefore found that the complainant had failed to demonstrate the respondent's lack of rights or legitimate interests in the domain name in accordance with paragraph 4(a)(ii) of the UDRP.

As for the third requirement under the UDRP – whether the respondent had registered and used the domain name in bad faith – the panel noted that the respondent had acquired the domain name in 2003, before the complainant had begun using its trademark in the United States in 2006. The complainant acknowledged that its trademark was registered after the registration of the domain name but relied on the so-called 'Octogen cases' to assert the respondent's bad faith (on the basis that bad faith can be satisfied where a domain name has been registered in good faith but subsequently used in bad faith, or the doctrine of "retrospective bad faith registration"). The complainant also argued that the respondent could not have ignored its trademark given its well-known character, and that the respondent's use of the domain name to resolve to a parking page was in bad faith.

The panel rejected the complainant's claims. It noted that the complainant had failed to submit evidence that the respondent could have been aware of the complainant's trademark and that it registered the domain name with the complainant in mind. The panel also found that there was no evidence of any use of the domain name in bad faith, as the domain name resolved to a parking page containing links that did not target the complainant or its trademark. The panel therefore concluded that the respondent had registered and used the domain name for its "inherent value as a three-letter domain name", and not in an attempt to take advantage of the complainant's rights.

The panel found that the complainant had also failed to demonstrate that the respondent registered and used the domain name in bad faith, in accordance with Paragraph 4(a)(iii) of the UDRP.

The complaint was therefore denied. The panel also made a finding of reverse domain name hijacking as it found that the complainant should have known that it could not have succeeded based on the facts of the case, particularly since the domain name was registered several years before the complainant's existence and there was no evidence that the respondent was aware of the complainant's rights or had used the domain name in bad faith. The panel also took into account the fact that the complainant had based its complaint on bare assertions without submitting supporting evidence. The fact that the complainant's original submission was also deficient, having failed to address bad-faith registration and use, also seems to have played a role in the panel's decision.

Comment

This decision highlights the fact that where a domain name has been registered before a complainant has acquired trademark rights, complainants are likely to have difficulty in proving bad-faith registration. Complainants must not only demonstrate that a respondent was aware of their rights, but also that it intended to take advantage of those rights. This might prove particularly difficult in cases such as this that involve three-letter domain names, which often have limitless meanings and a lower degree of distinctiveness. Therefore, complainants should carefully consider the facts and evidence of their case before deciding to file a complaint under the UDRP in order to reduce the risk of denial and a possible finding of reverse domain name hijacking.

For further information on this topic please contact Jane Seager or Soraya Camayd at Hogan Lovells by telephone (+33 1 53 67 47 47) or email (jane.seager@hoganlovells.com or soraya.camayd@hoganlovells.com). The Hogan Lovells International LLP website can be accessed at www.hoganlovells.com.

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