13 July 2023
Brands Update - July 2023 – 4 of 5 Insights
Brand owners can often be frustrated by the acquisition of key assets, like top level domains, by third parties. While it may seem as though third party acquisition of these assets is an attempt to thwart the legitimate interests of the brand owner, this Uniform Domain-Name Dispute-Resolution Policy (UDRP) decision shows that this is not always the case.
The secondary market in domains seems now to be regarded as legitimate in all cases, save where the acquirer actively pursues a brand owner for financial compensation in exchange for the transfer of the domain name. As this fact pattern occurs fairly infrequently, it is imperative that brand owners acquire core domain name assets at the outset.
There are three requirements that need to be met for a UDRP complaint to be successful and the domain name at issue to be transferred to the complainant:
the domain name must have been registered and used in bad faith.
While Foundations had no trouble in proving that Mr Kubba's www.gaggle.com domain name was identical to its own trade mark rights, its claim fell at the second and third hurdles.
WIPO held that Mr Kubba had demonstrated that he, in fact, had a legitimate interest in respect of www.gaggle.com. It accepted his claim that he had no knowledge of the complainant's GAGGLE brand before purchasing the domain name (although this could have been different if Foundations had proven that its GAGGLE brand was well-known). GAGGLE is a dictionary – not an invented – term and numerous third parties around the world own trade mark rights in GAGGLE for various different goods and services.
There was no evidence that Mr Kubba was aware of the complainant's GAGGLE brand when he registered the domain name or had ever used his domain name in respect of children's products.
The secondary domain name market and the acquisition of domain names for the purpose of selling them is not, in and of itself, illegitimate. In fact, WIPO held that, unless there was evidence that the respondent actively targeted the complainant and demanded a high price for the domain name, then such activity will likely be a valid enterprise.
Given these findings, it is unsurprising that WIPO went on to hold that the mere offering for sale of the domain name to the complainant could not be deemed to be registration and use in bad faith, despite the fact that, during negotiations, a high price was demanded.
13 July 2023
13 July 2023
by Julia King and Louise Popple
by Julia King and Louise Popple