The domain name? Spase.com, created in 2005 and continuously used by a US national to generate revenue through a parking page. The complainant? An entrepreneur who founded Spase, Inc. (United States) in 2019. The latter initiated a UDRP complaint against Mrs. Jello, holder of spase.com.
The parties’ arguments led the three-member panel to decide several issues: the admissibility of a late response and additional submissions; the scope of the UDRP; in the absence of a registered or registered trademark, the demonstration of the existence of an unregistered trademark or common law trademark. Four other points should be highlighted.
1. How can the complainant get the transfer of a domain name registered before the trademark?
The anteriority of the trademark is not a condition to gain the transfer of the domain name. Nevertheless, proof of the defendant’s bad faith is imperative. Bad faith implies that the defendant is aware of his act’s prohibited nature, from which follows the complainant’s obligation to demonstrate that the opposing party was aware of the trademark concerned on the domain name registration day.
The WIPO Jurisprudential Overview 3.0. distinguishes the scenarios in which, exceptionally, the trademark’s posteriority does not prevent the transfer request. This is the case when the domain name was registered: “(i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.” (WIPO Jurisprudential Overview 3.0, 3.8.2). The common denominator remains the knowledge of the trademark by the registrant of the domain name.
In this case, the defendant was apparently never related in any way to the complainant. Furthermore, the domain name had been registered fourteen years before the trademark’s birth. Accordingly, any attempt to prove that the registrant had acted in bad faith was in vain.
2. The reference to the booking.com case law
The defendant argued that “spase” was a generic term in the Bosnian language. The argument did not convince the panel. However, the latter took the opportunity to make a reference to the recent Booking.com case law into the UDRP legal regime:
“the United States Supreme Court recently issued a land mark decision in United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365, at *3 (U.S. June 30, 2020), in which the Supreme Court held that whether a term is generic depends on how consumers perceive the term“.
The reference to the Booking.com decision is not in itself unexpected since the parties to the dispute are subject to United States law. However, to avoid any ambiguity, it would undoubtedly have been beneficial to make a reference to the principle according to which recourse to a specific State law applies only between parties subject to this law.
3. A pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name
Following Article 4.b (ii) of the UDRP Principles, the complainant argued that the defendant had engaged in a pattern of conduct. Paragraph 3.1.2. of the WIPO Synthesis provides further details (WIPO Jurisprudential Overview 3.0, 3.1.2.).
The defendant is familiar with UDRP “courtrooms”: seventeen proceedings at the WIPO and the NAF.
Among the decisions that resulted in transfers, some may give rise to controversy as the generic or descriptive character is obvious: camilla.com, milly.com, hockeycanada.com, and beam.com. The use of the domain name (most often parking pages with commercial links) convinced the panelists that the defendant had acted in bad faith. However, in many cases, and particularly where domain names are composed of generic or descriptive words, it is the automatic engendering of commercial links that may reveal the trademark’s existence to the domain’s holder, that is to say, after the date of the registration. This situation poses a challenging difficulty for the panelist called upon to make a decision on the ground of Article 4.b (ii) of the UDRP principles. In any event, the panelist cannot contradict the res judicata rule.
4. Reverse domain name hijacking
Was the complaint initiated in bad faith? Rule 15(e) of the UDRP Rules provides the panelist with the power to rule on the complaint’s abusive nature. He can and, in our view, should raise the issue ex officio when the circumstances of the case invite him to do so (see, e.g., “Orizon.com: une UDRP atypique”, iptwins.com, 2020-09-05).
In this case, the panel ruled that the groundless complaint was made in bad faith. In this regard, the panel highlighted the following circumstances: i) regular use of the domain name for fourteen years; ii) filing of the complaint as a last option after the failure of negotiations on the sale price of the domain name.
