by David Barnett et al.
Introduction to the UDRP
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a domain dispute procedure overseen by the Internet Corporation for Assigned Names and Numbers (ICANN), and must be followed by all ICANN-accredited registrars. It is applicable to many TLDs (top-level domains, or domain extensions), including all gTLDs and new-gTLDs and has also been adopted by the managers of certain ccTLDs, such as .nu, .tv and .ws. The cost of bringing a UDRP is typically over $1000, depending on the number of panellists required to decide the case, with the possible successful outcomes being domain recovery (i.e. transfer of ownership), or domain name cancellation or suspension[1,2].
In the case of a dispute, the complainant is required to select an approved administrative dispute resolution service provider to administer the proceeding. These include the World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF), and Czech Arbitration Court, Arbitration Center for Internet Disputes.
In order for a UDRP to be successful, the complainant must establish three elements:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
- The registrant does not have any rights or legitimate interests in the domain name
- The domain name has been registered and is being used in 'bad faith'
Several factors are relevant to a determination of bad faith, including whether the registration was made with the primary purpose of selling the name to the complainant, to prevent the rights-owner acquiring the domain, to disrupt the business of a competitor, to attract (for commercial gain) users to the website by creating a likelihood of confusion with the mark, and/or whether there has been a pattern of such conduct by the registrant.
If a complainant loses a UDRP proceeding, they can in many jurisdictions bring a lawsuit against the domain name registrant under local law. Conversely, if a registrant loses a proceeding, they can file a lawsuit against the rights owner within ten business days to prevent the registrar from transferring the domain name in the relevant jurisdiction.
The case of Inera AB v Oskar Zajączkowski (Case No. D2024-0773) - inera.cloud[3]
The analysis presented in this article concerns a dispute made by Inera AB, Sweden (represented by Abion AB) (the Complainant) against Oskar Zajączkowski, Poland (the Respondent), the registrant of the disputed domain name inera.cloud (registered through OVH as registrar), through the WIPO Arbitration and Mediation Center.
Inera is a "digitization company that contributes to developing welfare", and the holder of EU and Swedish trademark registrations for the stylised mark INERA (class 44) and a Swedish registration for the word mark INERA (class 44).
The disputed domain name was registered on 08-Dec-2023, but no evidence of active website content was recorded. On 08-Feb-2024, the Complainant's counsel sent a C&D notice to the registrar, stating that the INERA trademark registrations had been held since 2010 and that the domain registration "constitutes trademark infringement", but with no reply received.
Following the commencement of the dispute proceedings (on 20-Feb-2024) - following a request to the registrar for disclosure of registrant details, given that the original domain whois record was redacted - the Respondent sent several informal responses[4] to the dispute centre, variously asking for the dispute to be suspended (including statements of financial concern), offering to sign a settlement form, and ultimately stating that the domain had been cancelled and that he had no access to it. There followed a period where the proceeding was suspended for the purposes of settlement negotiation, before the Complainant ultimately requested its reinstitution.
The panellist in the case noted that the complaint submitted to WIPO included "no evidence about when [Inera] was formed, or ... how extensive its activities are", did not include the trademark registration certificates or information on when the rights owner first used the mark, and did not include evidence on "the extent to which [the] INERA mark is recognized or used as a source identifier for [their] 'digitization' products or services".
It was also noted that, in cases where a settlement has not been achieved, but the Respondent has given consent to transfer the domain, many panels will simply agree to this resolution. However, there is a discretionary option for the panel to proceed to a substantive decision nevertheless; in view of the Respondent's outstanding questions, this option was taken in this particular case.
The panellist accepted that the Complainant has rights in the INERA mark and that the domain name is identical to the mark. In general, a Respondent can establish rights or legitimate interests by offering goods and services, being commonly known by the name in question, or making legitimate non-commercial or fair use. However, these points were not addressed in this case, because the Complainant was viewed as having fallen short of fulfilling its burden to prove bad-faith registration and use; specifically, no evidence was provided that the Polish Respondent was likely to have been aware of the Swedish INERA mark when the domain registration was made. Furthermore, it was noted that INERA (despite - according to the panellist - being a coined term, and thereby an inherently distinctive trademark[5] - this itself not, however, being evidence of renown) is also used as a trademark by a number of third parties, and is a short word of the form which is usually viewed as being generally desirable as a domain name registration. An additional comment was also made that, under the terms of the UDRP, the Respondent must be demonstrated to have actually targeted the Complainant's mark (rather than there simply being a potentially coincidental use of the same name, as may be relevant in a trademark case). Given these factors, the UDRP was unsuccessful, and the Complainant's requests were denied.
Take-aways and discussion points
- The case highlights the importance of the submission of relevant documentation (such as trademark certificates) and evidence in UDRP cases - particularly to highlight the extent and length of time of use of the mark in question, and to provide indications that the Respondent would have been aware of its existence at the time the domain registration was made (and was deliberately targeting the mark specifically). In this case, the Complainant might have placed greater emphasis on their pre-existing EU-wide trademarks, highlighted business operations in the relevant region, and utilised evidence from search-engine results for searches carried out in the Respondent's country.
- Following on from the above points, there is a burden on the Complainant to demonstrate bad-faith registration and use of the domain name. This may be more difficult in cases where there is no live website content (i.e. no active use of the domain name), although the 'passive holding' doctrine does allow for this option, depending on the extent of renown of the mark in question, whether there is any conceivable good-faith use, and the existence of any attempt by the registrant to hide their identity (though this last point is less relevant in the era of GDPR). Evidence of serial infringing behaviour by the registrant (if available) would also have been beneficial.
- In general, a number of elements of the case remain unclear. It is uncertain whether the Respondent is genuinely (as they claim) a private teenage individual with no funds and limited understanding of the dispute process and an apparent inability to access the domain in question. It is notable that there is generally no cost to a Respondent in such a case, unless seeking a larger number of dispute panellists or independent representation. Additionally, the whois information for the domain was redacted, and it is possible that the registrar may have been supplied with false contact details (although clearly the communications sent to the Respondent were being received and replied-to).
- Furthermore, there seem to have been a number of opportunities in this case where the Respondent was willing to capitulate and/or reach a settlement voluntarily. It might have been advisable for the Complainant (or their representatives) to assist the Respondent in following this process, rather than pushing for a conclusion to the proceeding which was ultimately not in their favour. It is unclear why this alternative route was not taken - perhaps the UDRP was launched as a speculative 'low-touch' action - perhaps as part of a 'group' of disputes / attempted acquisitions (although UDRPSearch.com lists just one other - successful - case by Inera AB, in this case concerning a non-branded domain name (vardhanboken.se)), or perhaps the Complainant was hoping for a successful outcome which could be used as a legal precedent.
- It is also noteworthy that the discretion available to the Panel was exercised to a fairly high degree in this case, with the panellist apparently determined to press towards a final decision even when the Respondent appeared willing to settle, and additional evidence (such as that concerning third-party use of the same mark) appearing to have been proactively sought. It certainly seems to have been at least a contributing factor that the panellist was conscious of the lack of documentation and evidence provided by the Complainant, and may have taken the view that the dispute procedure was not being taken seriously.
- What sort of follow-up routes might be open to the Complainant? The UDRP framework does not allow for any appeal process (unlike the DRS process for .co.uk domains), but it might be an option to re-file the dispute (which can be permitted if, for example, 'new actions' have occurred since the original decision[6]), perhaps through an alternative forum. In some cases (depending on the nature of use), a trademark infringement case might also be a possibility. Failing that, other options might be seeking a private settlement or taking a litigation approach in a relevant jurisdiction.
Acknowledgements
This article follows on from a discussion of the case in question at Stobbs CaseFest #16 (London, 02-Oct-2024). The associated presentation was compiled by David Barnett, Martyna Sawicz and Daniel Smith-Juggins, with support from Jessica Wolff and other members of The Purge team. Thanks must also go to other members of the wider Stobbs team for their input and contributions.
References
[1] https://www.icann.org/resources/pages/help/dndr/udrp-en
[2] https://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-Resolution_Policy
[3] https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-0773.pdf
[4] Note that a failure for a Respondent to submit a formal response will not automatically produce a win for the Complainant.
[5] It is worth noting that the term 'inera' can actually be interpreted as a Swedish translation of the word 'internal'. However, this apparent error is not likely to have had any substantive bearing on the case, given that no bad faith was found even where the term was considered to be distinctive.
[6] https://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf
This article was first published on 10 October 2024 at:
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