It is important at the time of drafting a complaint to keep in mind the scope of the UDRP. You may find that if the circumstances surrounding the dispute are complex and it involves numerous parties or issues, the UDRP may not be the right forum to address those issues.
The Complainant Play Club by Cipriani, S.L. and Giuseppe Cipriani of Ibiza, Spain found this out the hard way when they filed a complaint against 6 domain names which they believed incorporated their unregistered trademark LA BOMBA IBIZA and BOMBA IBIZA used in conjunction with a nightclub that was to be opened in Ibiza in the summer of 2013.
In a very complex case the Panel opened its Discussion and Findings by outlining the scope of the policy to the parties, highlighting the elements that a Complainant would need to show in order to be successful in a dispute.
The Panel noted:
“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy ¶ 4(a).”
We now have our basis for our complaint. Although on a initial reading it may seem that the Complainant only has three elements to prove, it is possible that these three elements can be broken up into sub-elements.
Firstly, the panel outlined that That the domain name needs to be identical or confusingly to a mark In which the Complainant has rights. On closer inspection it is quite clear that the Complainant firstly needs to prove the existence of such a right.
In addressing the Complainant’s unregistered rights in this case the panel found;
“On their own admission, the Complainants do not own any registered trademarks for BOMBA IBIZA. The Complainants allege that they have unregistered trademark rights in BOMBA IBIZA. In order to establish unregistered trademark rights, a complainant must show that an alleged trademark has become a distinctive identifier associated with the complainant or its goods or services (i.e. that the trademark has acquired a “secondary meaning”).”
In other words, the Complainant has the heavy burden of showing that the terms LA BOMBA IBIZA and BOMBA IBIZA have been uniquely adopted solely in relation to their own business to the effect that the general public would identify the terms with the specific goods or services they provide.
Although the only evidence provided by the Complainant which predated the registration of the domain names was a “tweet” on January 12, 2013 (which of course proved to be insufficient evidence of unregistered rights), the Complainant also provided evidence of marketing activities conducted under the alleged BOMBA IBIZA unregistered trademark and press coverage featuring the alleged trademark. Although postdating the registration of the disputed domain names the first element of the policy is not concerned with the time these rights came into existence, that is an issue to be addressed under the “Bad Faith” heading.
Concerning the issue of Legitimate Rights and Interests, the background to the dispute revealed that the third Respondent owned community trademarks for the term BOMBA IBIZA registered shortly after the registration of the domain names. It was alleged by the Respondent and supported by evidence that he was supposed to be a partner in the nightclub, and as a partner, the Respondent registered the Community Trademarks and Disputed Domain names. He further stated that he intended to license these to the company operating the nightclub (he did not intend to transfer them to the Complainants). Apparently the parties never reached an agreement to jointly run the nightclub and the Respondent became concerned about the Complainants’ “legal problems”.
The case was more complex than the Panel initially thought. In fact at the time of the dispute being filed there was a criminal suit on foot involving the parties to this complaint in Spain. The Panel however proceeded with its determination of the case, again sticking to the clear elements of the UDRP, holding:
“Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
The Panel finds that the Complainants have failed to make out a prime facie case and that the Respondents have rights or legitimate interests in the Disputed Domain Names for the following reasons:
– the third Respondent has a connection to the BOMBA IBIZA trademark, as his company registered the Community Trade Marks;
– before any notice to the Respondents of the dispute, the third Respondent was making demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. The evidence provided by both parties clearly shows that the third Respondent was in fact a partner in the nightclub project and not an investor (as was submitted by the Complainants). At the time the Disputed Domain Names were registered, the third Respondent had an option to purchase the proposed site of the nightclub for a substantial sum. He intended to use the Disputed Domain Names to promote the “Bomba Ibiza” nightclub and to eventually license both the Disputed Domain Names and the Community Trade Marks to the company operating the nightclub.”
In light of the above it was made apparent that the Respondent did in fact have rights and legitimate interests in the disputed domain names, therefore the Complaint was DENIED.
Some may feel that this was not the right forum for this dispute as it involved a much larger dispute between the parties regarding their business relationship. The Panel also made a point of highlighting this point stating:
“To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (NAF Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).”
However this Panelist, by keeping the policy at the forefront of his mind and focusing on the relevant issues of the dispute, was still able to come to the correct decision.