In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name <aizel.com>, finding that the Complainant had failed to prove that the Domain Name had been registered in bad faith.

The Complainant was Art-Four Development Limited, a company incorporated in the British Virgin Islands which licensed the trade mark AIZEL, registered in 2015, mostly for marketing and sale of luxury fashion merchandise in various territories.

The Respondent, Tatiana Meadows, was an individual resident in the United States who had registered the Domain Name in 2000. At the time of the decision, the Domain Name did not resolve to an active website.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent had never responded to any communications from the Complainant and she did not respond to the Complaint.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

Under the first element of paragraph 4(a) of the UDRP, the Panel found that the requirement was satisfied because the Domain Name was identical to the trade mark registered by the Complainant.

As regards the second element of paragraph 4(a) of the UDRP, the Panel found that the Complainant had established a prima facie case of absence of legitimate interests and that the Respondent had failed to rebut the prima facie case as she had not seized the opportunity to demonstrate her rights or legitimate interests. The Panel, confirming the Complainant’s arguments, held that (i) there was no evidence that the Respondent had been using or preparing to use the Domain Name in connection with a bona fide offering of goods or services, whereas the Domain Name had never contained any information related to the Respondent and it had never been used and had been parked since its registration, (ii) the Complainant had never consented to the use of the trade mark, (iii) there was no evidence that the Respondent had been commonly known by the Domain Name, or that she had trade mark rights in relation to the Domain Name and (iv) the Respondent had not been making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain and that no active website was associated with the Domain Name.

As regards the third element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had registered and used the Domain Name in bad faith on the grounds that the registration constituted passive holding and cybersquatting for the purpose of selling domain names to the owners of trade marks for valuable consideration or preventing trade mark owners from reflecting their trade marks in the domain names.

The Complainant indicated that the Respondent had registered approximately 30 domain names not connected or used in connection with the Respondent or any bona fide offering of goods or services. The Complainant added that it had endeavoured, in vain, through numerous methods, to contact the Respondent and that the phone numbers were not correct.

However, the Panel held that the Complainant had failed to establish that the Domain Name had been registered in bad faith. The Panel noted that the Respondent had registered the Domain Name in 2000, almost fifteen years before the trade mark registration by the Complainant who had not provided evidence that it was operating its business or that it had any registered or common law trade mark rights prior to 2000. The Panel specified that the only instance where bad faith could be established in such a situation was when evidence was provided that the respondent’s intent in registering a domain name was to unfairly capitalise on a complainant’s nascent trade mark rights.

In addition, the Panel considered that the passive holding arguments invoked to demonstrate the absence of legitimate interests were too weak to successfully prove bad faith use and that, in any event, the third element of paragraph 4(a) of the UDRP could not be satisfied if bad faith registration was not established.

This decision is an illustration of the importance of proving bad faith at the time of registration of a domain name, especially when the complainant’s trade mark did not yet exist at that time.

The decision is available here.

For more news and analysis that is tailored to you, as well as access to Hogan Lovells' cutting-edge interactive Lawtech tools, register for free on Engage.

You can also keep track of all the Engage content by following our LinkedIn page.