In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a UDRP panel denied a UDRP complaint for the disputed domain name feev.com, finding the dispute to be wholly unsuitable for determination under the UDRP, and entering a finding of Reverse Domain Name Hijacking (RDNH).
The Complainant, Feev Holding B.V, was a Dutch company providing Internet and IT services, including fintech and cryptocurrency services. For use in connection with its services, the Complainant owned the Benelux trade mark, FEEV, registered on 1 October 2019.
The Respondent was Firas Dabboussi, FeeV, of the United States. The disputed domain name was registered on 22 February 2002. At the time of the decision, the disputed domain name did not resolve to an active website.
According to the Complainant, the dispute had its roots in a contractual dispute between the Parties, whereby the Parties had agreed to transfer the disputed domain name to the Complainant for consideration in the amount of USD 15,000. The Complainant alleged that the Respondent had wrongfully reneged on the contract. The Complainant further asserted that the Respondent had registered the disputed domain name in 2002 with a view to selling it "for a small fortune", amounting to bad faith registration of the disputed domain name. In a supplemental filing, the Complainant claimed that the Respondent had fabricated evidence in the form of emails originating from the Complainant's representatives.
The Respondent on the other hand claimed that the disputed domain name was registered for personal reasons, having previously used the disputed domain name in connection with a website. The Respondent disputed the existence of any contract having been concluded, claiming that the Complainant had misled the Respondent into thinking that the Complainant was a music start-up, when in fact the Complainant was engaged in the financial/cryptocurrency sectors. With regard to the allegedly fabricated emails, the Respondent explained that these were unsolicited emails received by the Respondent from recruitment agencies attempting to contact individuals working for the Complainant.
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.
Identity / similarity and rights / legitimate interests
Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant had established rights in the FEEV trade mark, and that the disputed domain name was identical to the Complainant's trade mark. The Panel noted that there was no requirement under the first element for the Complainant to show prior trade mark rights, being a matter for consideration under the second and third elements.
Noting that the Complaint would go on to fail categorically under the third element, the Panel refrained from making a finding under paragraph 4(a)(ii) of the UDRP.
Under paragraph 4(a)(iii) of the UDRP, the Panel concluded the Complainant's case to be "entirely misconceived". In reaching its findings, the Panel noted the inherent difficulty of proving bad-faith registration where the registration of a domain name pre-dated the accrual of a complainant's trade mark rights. Given that the Respondent's registration of the disputed domain name preceded the Complainant's trade mark by some 17 years, the Complainant could not prove that the disputed domain name was registered in bad faith, and as such, the Complaint failed. The Panel also commented that the Complainant's reliance on alleged contractual rights was irrelevant to the Panel's determination under the UDRP, noting that the UDRP was designed to address abusive instances of domain name registration and use (cybersquatting), whereas the determination of contractual claims and their enforcement were matters that were appropriately dealt with by courts of competent jurisdiction. The Panel determined that there was no evidence to suggest that the Respondent had registered the disputed domain name for the purposes of selling it at a profit. The Panel accepted the Respondent's claim that the allegedly fabricated emails were sent by a third party, stating that the Complainant's allegations of fabrication of evidence where "completely unfounded and should never have been made."
Reverse Domain Name Hijacking (RDNH)
In determining whether the Complainant had engaged in RDNH, the Panel again referred to the fact that the registration of the disputed domain name predated the Complainant's trade mark rights by many years, clearly precluding a finding of bad faith registration under any reasonable interpretation of the UDRP. By filing the Complaint, the Complainant had disregarded well-established UDRP consensus views, and had instead based its case on alleged contractual entitlements that were not subject to appropriate determination under the UDRP, having even gone as far as making serious, unfounded allegations that the Respondent had fabricated evidence. The Panel therefore found that the Complaint ought never to have been brought, that the Complaint was brought in bad faith, and amounted to an abuse of the UDRP.
This case clearly highlights two key considerations for any prospective filer. First, it is necessary to engage in a frank consideration of the merits of one's case against well-established principles as expressed in prior UDRP decisions. Where it is clear that a case fundamentally falls short and is destined to fail under any single element (in the above case the third element), it should be recognized that such cases ought not to be brought. Secondly, numerous prior UDRP panels have clearly stated that the UDRP is not a mechanism for contractual enforcement. In light of the limited scope of the remedies provided for under the UDRP (cancellation or transfer of the disputed domain name to a complainant), it would be inappropriate for a UDRP panel to make its determination in order to appease the rights of a party wishing to enforce a contract, such matters being appropriately dealt with by courts of competent jurisdiction. Finally, while the UDRP does not apply such stringent rules of evidence as those applied in court proceedings, parties to UDRP proceedings should exercise caution against making allegations concerning opposing parties where such allegations are unfounded in evidence, or face the consequential undermining of their own credibility.
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