Saudi Arabian Oil (E. A. U.) wanted to obtain the transfer of the domain name orizon.com, identical to its “ORIZON” brand. However, the complainant faced a series of obstacles (OMPI, D2020-2035, Saudi Arabian Oil Co. v. Orizon Multimedia Inc., September 15, 2020).
Firstly, the domain name was registered in 1997 by Orizon Multimedia Inc. (USA), while the trademarks over which Saudi Arabian Oil was asserting its rights were registered in 2020. To obtain the disputed domain name transfer, the complainant does not necessarily need to demonstrate that the trademark was registered prior to the domain name. However, proof of the defendant’s bad faith is imperative, which implies that the defendant is aware of the prohibited nature of his act, from which it follows that the complainant has an obligation to demonstrate that his opponent knew the trademark concerned on the day of the registration of the domain name. In this case, such proof was impractical.
The vigilance of the panelist erected the second obstacle. In this case, the respondent company was dissolved in 2010, and its representative passed away in 2019. These circumstances plausibly explain the default of the respondent in this UDRP proceedings. In this case, the panelist ex officio carried out research relating to the use of the domain name. While consulting Archive.org, he discovered a trace of the use of the domain name Orizon Multimedia Inc. dating back to 1998. He deduced that this use was legitimate.
From a procedural point of view, given the circumstances of the case, the issue of reverse domain name hijacking (abuse of process) deserved to be raised. However, in the absence of a respondent, can the panelist raise it ex officio? On this point, the principles governing the rules of procedure, in particular Article 15 (e), do not confer on the defendant any monopoly on this legal remedy, so that the third-party decision-makers can take it ex officio. In any event, it should be ensured that the parties could be heard on the issue, so as to respect the principles of a fair trial. In this case, the panelist considered that the complaint was not abusive.
