Admissibility of a Complaint Aimed at Recovering a High Number of Domain Names Registered by More Than One Person
Trademark owners and especially, the owners of reputed or well-known trademarks have to deal frequently with cyber-squatting – bad faith domain name registrations that incorporate their marks. Among other reasons, these domains are registered either for speculative reasons, for the purpose of disrupting the business of a competitor or to attract, for commercial gain, Internet users to a third party web site or other on-line location.
It is also not uncommon that these registrations are done massively, by one or more persons, being the owner of the prior trademark rights obliged to incur into high costs of either acquiring the domains from their current owners, or recovering them initiating legal or administrative proceedings.
Since court proceedings are much more expensive and slow, it is recommendable to opt for administrative proceedings and, in particular, for the out-of-court dispute resolution system offered by one of the dispute resolution service providers accredited by ICANN, in case of the generic top level domains or gTLDs (for example .biz, .com, .info, .mobi, .name, .net, .org) or by the Spanish entity Red.es, in case of the domain names .es.
The complaint, that has to be filed in a specific format, is only accepted in disputes concerning abusive registrations of a domain names – when all of the following criteria are met:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights;
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith
As regards the first point, it is worth highlighting that, contrary to the Regulation that governs the resolution of disputes regarding the domain names “.es“ (hereinafter “Regulation”), the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter the UDRP Policy) does not specify that the complaint has to be based on prior rights, namely, on trademarks or other distinctive signs registered prior to the contested domain name.
On the other hand, in accordance with Article 13 of the Regulation, the complaint can be filed in relation to one or more domain names, provided that they are all registered by the same person.
The possibility of the complaint being directed against domain names that are owned by multiple registrants is not so obvious in the light of the above mentioned regulation. The answer has to be therefore looked for in the practice of the competent authorities.
One of the most recent examples of said practice is the Resolution of November 26, 2015 “Calvin Klein vs. W.Y and C.H” issued by Anxo Tato Plaza, the expert designated by Autocontrol (a Spanish dispute resolution service provider) to resolve a dispute in which Salvador Ferrandis & Partners requested, on behalf of our client, the transfer of 110 domain names registered in bad faith by two different persons.
The expert shared our position that there exists an unanimous doctrine of the competent bodies and especially of the WIPO (for example Cases D-2010-0281, D-2007-1834, D-2014-0241), according to which the possibility of a complaint being filed in relation to domain names owned by multiple registrants is available, provided that the domains in question are subject to common control.
In the above mentioned case it was demonstrated that those 110 domain names were registered by the same registrant agent at almost the same time, that the email address provided as the administrative contact was the same for all of the domain names and that the majority of then resolved to the webpage having the same content.
Moreover, all of the domains presented a similar composition pattern and included, apart from the well-known trademark of our client, descriptive or generic indications.
According to the expert, all of the above circumstances led to the conclusion that the domain names were under a common control and therefore that there shall be no objection as to form in which the complaint was submitted.
Once the above preliminary question was clarified, the expert upheld the complaint ordering the transfer of the domain names in question to our client.
Related Posts:
- The ECJ Decision on “Pie Optiek” and the concept of prior right licensee
- Adidas achieves the provisional blocking of four “.es” domain names
- EUIPO Researches on Online Business Models Used to Infringe IP Rights
- European Union Trademark Licenses do not Need to be Registered for Licensees to Pursue Infringers, Says CJEU, as Opposed to the Interpretation of the EU Trademark Court of Alicante