On April 28, 2020 we had a case note on Cyberplay Management Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / DIREX NV and Johann Mayer, WIPO Case D2019-2992.
We used the heading How to Lose a UDRP Case because it seemed to us that some cases were being so badly prepared and presented that you would think that those who prepared them wanted to lose the case. We know that is not so , but that things can always be improved. Since then, we still see cases that could have been won (either as Complainant or Respondent) but have been lost because vital pieces of evidence have been left out or the case has not been presented properly. So we are including again today our case note from April 28, 2020 and we invite you to read it again. We hope it will be useful to you in your domain name cases. We also plan to expand on it and give you some more suggestions that we hope will be useful for you in your domain name work.
As a refresher to the readers, this case was decided on January 22, 2020. Even though the UDRP aims to be an efficient and easy to understand method of dispute resolution and as such many cases are clear cut, we do 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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