Cyberplay Management Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / DIREX NV and Johann Mayer
Case No. D2019-2992
January 22, 2020
The UDRP aims to be an efficient and easy to understand method of dispute resolution. As such, many cases are clear cut. Despite this, we see the occasional complaint appear that completely misses the mark.
The third element of the UDRP clearly states, that in order for a Complaint to be upheld, the Complainant must prove that the Respondent registered the domain in bad faith and used it in bad faith. For this to have occurred, it then follows that the Complainant must hold trademark rights at the time the domain was registered.
In Cyberplay Management Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / DIREX NV and Johann Mayer, the Complainant claimed to have operated an online casino since 1992, at the domain <loki.com>. It sought transfer of 4 disputed domains, which all stemmed from the term <lokicasino> from the Respondent, who also operated in the online casino space.
Superficially, such a case may seem to have some substance; featuring two parties operating the same field. However, it emerged that the Complainant’s earliest trademark registration for the term LOKI was not until September 2017, some six months after the disputed domain names were registered.
To put it bluntly, the panel stated that:
“The record is devoid of any allegation, much less proof, that Complainant had a registered trademark at the time the Domain Names were registered”
Without this, how was the Complainant supposed to show that the Respondent registered the domain name in bad faith, specifically to attack the Complainant’s trademark?
While the UDRP does recognise common law (unregistered trademarks), there was nothing on record to suggest that the Complainant used its LOKI mark in association with online gambling before the disputed domain names were registered.
From the evidence on record, one could not conclude the disputed domain names were registered in bad faith. There was simply no trademark in existence when the Respondent registered them.
As a result, the Complaint failed on the third element and the Respondent got to keep its domains.
Clearly, this case had no chance of success, and could be considered hopeful at best. While the UDRP is an economical form of litigation, such cases will always be a waste of the Complainant’s money, and of everyone else’s time.
Potential Complainants need to have an understanding of the kinds of cases that will and won’t succeed. With regular reading of Domain Times, you will have a much better idea if your future claim is time and money well spent.
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