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 the domain names adgrabber.com and addgrabber.com due to insufficient evidence of the respondent's bad faith at the time of registration.
The Complainant was Adgrabber AB, a Swedish company operating an online platform related to media and marketing purchases. Created on 8 August 2018, the Complainant was the owner of the Swedish trademark for ADGRABBER, which was filed on 20 August 2018 and registered on 16 October 2018.
The Respondent was Robin Kochauf of Gordito AB, based in Sweden. He was previously the Chief Technical Officer (CTO) of the Complainant's company and signed a shareholder agreement in 2019.
The Domain Names were
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:
(a) 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
(b) The respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
The Panel first addressed two preliminary procedural issues regarding the language and the applicability of the UDRP in this matter.
Since the Complaint was filed by the Complainant in Swedish and the Respondent was also a Swedish entity, the Complainant requested that the proceedings be in Swedish even though the language of the registration agreement was English. The Respondent disagreed and insisted on a proceeding in English to minimize interpretational error in the decision. Given the Respondent's objection and the language of the registration agreement, the Panel denied the Complainant's request.
The Respondent then challenged the applicability of the UDRP in this matter based on the shareholder agreement signed between the Parties, whereby any disputes between the shareholders should be settled in a Swedish court. The Respondent's argument was not accepted by the Panel due to the fact that the Respondent was already bound by the UDRP via his registration agreement with the registrar.
Identity / similarity
As far as the first limb was concerned, the Complainant contended that the two Domain Names were either identical or confusingly similar (with an additional letter "d") to its Swedish trademark ADGRABBER. Given the filing / registration date of a trademark is considered irrelevant to the assessment of confusing similarity, the Panel found that the first limb was therefore satisfied.
Rights / legitimate interests
With regard to the second limb, the Complainant submitted that
the Respondent was initially instructed by the Complainant to
register the Domain Names on its behalf and was supposed to
transfer them to the Complainant once the latter had completed all
formalities with the Swedish company registration office. In
the meantime, the Complainant had paid all invoices related to the
Domain Names and used the Domain Name
The Panel noted that the Complainant had paid the registration
costs of the Domain Names and used
Regarding the third limb, the Complainant contended that it came up with the name ADGRABBER in the naming process and then instructed the Respondent to file a trademark application in this term on 20 August 2018. The Complainant therefore claimed that the Respondent, at the time of registration (i.e. between 10 and 13 August 2018), was fully aware that the Domain Names were to be used for the benefit of the Complainant. The Respondent countered that the Domain Names, unlike the trademark in question, were not registered on behalf of the Complainant but for the purposes of running the business of which he was still a shareholder.
In the Panel's opinion, the circumstances, such as the
shareholder agreement signed by the Respondent in 2019, the
Complainant's payment of all costs relating to the Domain Names
afterwards and the previous use of the Domain Name
Since the Complainant had failed to establish that the Domain
Names were registered in bad faith, the fact that they were found
by the Panel to have been used in bad faith (as evidenced by the
Respondent's refusal to transfer the Domain Names as agreed in
2019 and his subsequent offer to sell
This decision illustrates how ambiguity surrounding parties' common intentions at the time of registration may affect a panel's assessment of the third requirement in the sense that the respondent's then-current bad faith cannot be established retrospectively by the circumstances following the registration. As a result, it is important for start-ups to make sure that they register any related domain names in the name of the company and, if for any reason the registration has to be done in the name of a related party, such as a director or shareholder, enter into a written agreement clarifying the ownership and specifying the conditions (for example the timeline) for transfer of such domain names further to their registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.