Can one claim ownership of the name of a multisecular legend? The issue arose in a UDRP proceeding administered under the aegis of the Forum regarding the name “Robin Hood” (Forum, FA2201001980168, Robinhood Markets, Inc. v. Sven Dahlmeier, February 16, 2022, <robinhood.shop>, transfer, sole panelist Eugene Low). A quick search on the World Intellectual Property Organization Global Brand Database (ompi.int) helps realize that a few hundred trademarks reproducing the famous character’s name coexist. This situation requires every trademark owner to be careful not to infringe on the trademarks of others. When the business or development goals of the parties so require, the parties owning these trademarks must enter into coexistence agreements.
In this case, the complainant was Robinhood Markets, Inc., owner of “ROBINHOOD” trademarks registered for several years in the United States, in particular for financial services. As for the respondent, he was a natural person presenting himself as residing in Indonesia. According to the facts and claims of the parties, as set out in Forum decision FA2201001980168, the respondent had acquired the domain name <robinhood.shop> in July 2021. The previous holder would have used it to promote investment services in the cryptocurrency business. According to the complainant, the new holder of the domain name had allowed this use to continue. However, the respondent disputed this assertion, stating that the domain name was used to promote goods intended for children.
When should the good or bad faith of the domain name holder be assessed? The UDRP principles lay down the rule that the complainant must prove that the respondent: i) has registered the domain name in bad faith; and ii) is using the said domain name in bad faith. The good or bad faith of the respondent must be assessed at two different times: i) registration and ii) use.
Concerning registration, the notion of “registration” itself is extended to that of “effective takeover”, which includes the acquisition of a domain name created previously. In the present case, the sole panelist rightly assessed the good or bad faith of the respondent on the day of the acquisition of the domain name. However, the assessment is questionable. Indeed, to find bad faith, the sole panelist considered, on the one hand, that the respondent knew the American trademark ROBINHOOD of the complainant. Admittedly, under Article 2 of the UDRP Principles, it is up to the one who registers (or acquires) a domain name to search potential prior rights to ensure that the domain name does not infringe the rights of third parties. However, as mentioned above, there are hundreds of “ROBIN HOOD” trademarks. In addition, the complainant did not claim that its trademarks are well-known. In these circumstances, contrary to the solution decided, it is not sure that the respondent (residing in Indonesia, a country in which the complainant’s mark does not appear to be registered) was aware of the complaint’s trademark. In addition, to justify his decision, the panelist added that the complainant had notified the former owner of the domain name as to its rights. One can agree that the hypothesis of collusion between the assignor and the assignee is always plausible. However, the decision does not refer to such a hypothesis.
Moreover, nothing indicates that the purchaser was aware of said notification. Consequently, in the absence of evidence to the contrary, the presumption of acquisition in good faith had to prevail. Finally, some domain name transfer agreements include right to quiet enjoyment clauses, which the purchaser could take advantage of, if necessary.
Regarding the use in bad faith, the complainant must prove that the respondent is using the domain name in bad faith the day of filing the complaint. In this case, the complainant had, in all likelihood, demonstrated that the domain name was redirected to a page offering cryptocurrency services without further details. The respondent disputed the authenticity of the evidence, claiming that they predate the acquisition of the domain name. However, the evidence provided is presumed valid in a refutable way. On the other hand, the respondent claimed that he was using the domain name to promote articles aimed at children. Nevertheless, he did not provide any evidence of such use. Proof of commercial use was easy to provide. The inability of the respondent to provide a screenshot of a bona fide commercial use of the domain name or simple preparations for such commercial use facilitates the demonstration of bad faith.
