In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name wekit.com because the Complainant failed to prove that the Respondent had registered the domain name in bad faith, even though the Respondent was advertising it for sale and the Complainant had a matching trademark.
Background
The Complainant was a marketing agency founded in 2006 in Turin. It held an Italian trademark registration for the figurative mark WEKIT, applied for in October 2015 and registered in October 2018. There was nothing to indicate that the Complainant had used the trademark prior to 2015.
The Respondent was yang jin jie, based in China. Little was known about the Respondent, who did not reply to the complaint.
The Domain Name was
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.
Identity / similarity
As far as the first limb was concerned, the Panel easily found that this was satisfied as the Complainant had rights in the trade mark WEKIT and the Domain Name was identical to it.
Rights / legitimate interests
With regard to the second limb, a complainant is required to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a case is established, the burden of proof then shifts to the respondent, who must put forward arguments and evidence to demonstrate rights or legitimate interests in the domain name. In this case, the Panel did not address the rights or legitimate interests of the Respondent, given its conclusion on bad faith under the third limb.
Bad faith
As far as bad faith registration and use was concerned, the Panel found no evidence of this. Based on the limited evidence provided, the Panel noted that the Domain Name was registered several years before the Complainant was formed and more than a decade before the Complainant even applied for a trademark in the term WEKIT. There was no allegation or evidence of WEKIT being used as a trademark at the time that the Domain Name was registered in 2002. The Panel also underlined that "wekit" was a fairly short term, and noted that "five-letter domain names which are also easy to pronounce, if not catchy, may be popular registrations".
In conclusion, the Panel found that the complaint simply failed for lack of any evidence that the Respondent had targeted the Complainant and its trademark at the time that the Domain Name was registered. In view of this, the fact that the Domain Name was being advertised for sale was of no consequence to the Panel’s decision.
Comment
Once again this decision illustrates that UDRP Panels insist on bad faith registration AND use in accordance with the plain wording of the Policy. Unlike various country-code Top Level Domains (ccTLDs) which have adopted dispute resolution policies allowing respondents to evidence bad faith registration OR use, complaints brought under the UDRP will fail when bad faith registration is simply not apparent. In the present case, where the Domain Name was registered four years before the Complainant was formed and well over a decade before the Complainant applied for its trademark, and no evidence was adduced that the Domain Name was registered in order to profit from the Complainant's rights, the Panel had no trouble in denying the case without even going on to consider the issue of bad faith use.
Complainants in cases such as these have to consider either bringing their complaint in a different forum or negotiating a purchase of the domain name. Indeed, as the Panel in this case pointed out, short domain names can sell for quite significant amounts, especially those under .COM, even if they are not necessarily sought after descriptive words.
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