Complainant 5 PRE VIE W AB of Stockholm, Sweden, have failed to secure the domain name <5preview.com> even though no response was filed and represented by legal counsel.
The Complainant is the proprietor of a figurative mark for the term 5 PREVIEW which post dated the registration of the domain name. But where things really got interesting is where the Complainant contended the domain name was registered as part of a “previous relationship” with the Respondent.
Cases involving prior business relationships have always been an issue when it comes to the UDRP. Many Panels believe that because the policy was not intended to address contractual disputes between parties such cases fall outside the scope of the UDRP.
However this does not seem to be the case here, on the contrary the Complainant failed to provide sufficient information about their pre-existing relationship which would have allowed the panel to make an informed decision, perhaps in their favour.
The Panel held:
In the present matter, the Panel considers that the Complainant’s case leaves too many open questions to enable the Panel to make a proper assessment of the issue. What exactly is or was the precise nature and history of the relationship between the Parties? How did this lead to the Respondent registering the disputed domain name? What were the prevailing circumstances at the time of registration? Had the Complainant established any rights, such as unregistered trademark rights, before the disputed domain name was registered? If not, had the Complainant communicated its intentions regarding the disputed domain name and/or its proposed enterprise to the Respondent? If so, what were these intentions?
These are all crucial questions for the Complainant’s case because unless the relationship, business or otherwise, is fully understood along with the full circumstances, such that the registration of the disputed domain name may be placed into its proper context, the Panel cannot be satisfied as to whether the Respondent intended to target and take unfair advantage of the Complainant’s rights at the point of registration or was simply effecting the registration in good faith as part of its then existing relationship with the Complainant.
From the Panel’s discussion and findings under the bad faith element it suggests that the Complaint gave little consideration to the burdens imposed upon Complainant in order to satisfy the policy.
The Panel held that;
The Complainant’s submissions do not focus on any particular element of paragraph 4(b) of the Policy. The essence of the Complainant’s case is that the Respondent had a prior relationship with the Complainant’s founder, the nature of which is not specified, whereby the Respondent came to register the disputed domain name on the Complainant’s behalf. The Complainant adds that the Respondent has never been an agent, distributor or in any other way held any rights to the Complainant’s brand. The Complainant indicates that for reasons which it does not specify, the Respondent has recently denied the Complainant access to the disputed domain name and has demanded money in exchange for its release.
The Panel rightly held that there are circumstances that prior business relationships can amount to bad faith registration and use, for example where the Respondent was seeking to take advantage of rights that may arise in the future or where the Respondent was a former employee or business partner, or other informed source, however it is not for the Panel to make the case for the Complainant.
Complainants must recognise that the burden is on them to show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of these elements need to be supported by appropriate evidence and even relevant case law will help to back up any arguments you make.
Complainants need also be aware that the UDRP is administrative in nature which means there are no cross-examinations and no trials so each party is giving one opportunity to make their case. Yes, the panel does have the power to make a procedural order and request further information from the parties but as seen in this case the Panel rightfully decided against making it on the basis that “the principles of the Policy envisage that the Parties shall present their case fully in the first instance and that any invitation to provide further information shall be exceptional and of necessity.” (Given that the Complainant was represented by legal counsel may have also influenced the Panel’s decision not to exercise its power).
This case should serve as an important reminder to Complainants. If you are considering filing a UDRP complaint in the near future, see our blog post: “Should I file a UDRP Complaint?” for more info
UDRP POLICE DBS