Is it possible to return an expired domain through the UDRP procedure?
Recently, WIPO considered two rather unusual domain disputes. In both cases, the domain name holders lost their domain names due to the expiration of their registration and decided to return them to themselves by filing a complaint with WIPO as part of the UDRP procedure. WIPO took different decisions on these disputes: in the first case, the claimant was refused, in the second - his demands were met.
In the first case, Jeremy Sejm, the owner of the iSound.com domain could not regain the domain .
Events developed as follows. At the end of 2011, J.Seym bought from the previous owner the rights to the ISound trademark together with the website and the domain name iSound.com for $ 31,000. Soon he decided to resell the domain for profit and for two years negotiated with the American company i.Sound (point - The only difference in the brand name is one of the fastest growing manufacturers of audio players and accessories for video games.
')
The domain owner requested an exorbitant price of several million dollars, based on the fact that domain names with the prefix "i" are related to Apple products, and therefore their value is very high. In particular, he referred to the sale of iCloud.com for $ 4 million.
But one day something unexpected happened: the domain registration expired and another person intercepted it, from whom i.Sound bought it - of course, at a much lower price (the exact amount is not yet known).
After that, Jeremy Diet appealed to WIPO with a complaint demanding the return of his rights to the domain name. According to him, he was not going to stop registering a domain, and he did not receive any notifications about the end of the registration period. He also explained his domain rights by the fact that he is the legal owner of the iSound brand.
But his arguments did not satisfy the commission. Plaintiff failed to prove that he used the iSound brand in any way in his business. The only thing he presented as evidence is a few old screenshots from the site. Most of the time J. Sejm either kept the site in an inactive state or placed ads on it, including with the i.Sound brand. Whereas i.Sound is a promising emerging company, known both in the US and in other countries. The presence of a dot in the brand name (an invalid character in the second-level domain) also cannot be a reason to return the domain.
Therefore, the commission considered that the defendant is the legal owner of the domain and decided to refuse the plaintiff in his claim.
In the second case, the company from Stockholm Intrac Group AB managed to recover the expired domain intrac.com
Since 2004, Intrac Group has owned the Intrac brand and has several sites in other domain zones: .se, .ee, etc. At the beginning of 2013, she mistakenly did not pay for the renewal of her registration on time, and her domain was bought out by a third party. Intrac filed a complaint with him at WIPO, but he did not respond to the letter. Later it turned out that he, seeing that the domain contained a trademark, tried to resell the domain as soon as possible. And the buyer was found - it turned out to be a user from Korea, who purchased it for $ 21,500.
The Commission noted that this domain redirects to the website intrac.biz, which has no relation to the company Intrac. At the same time, the new owner has no right to use the Intrac trademark, and the domain name itself is not a dictionary word (it does not exist in either English or Korean). According to the respondent, Intrac is an abbreviation of the name of the company Information Technology Links Col, with which he cooperates, and in the future he planned to create a website on the intrac.com domain about its services. But he did not provide any evidence of this.
Based on these facts, the commission decided that the defendant has no rights to possession of the domain intrac.com, moreover, he used it illegally, violating intellectual property rights. In this regard, the domain was returned to the previous owner.
Thus, we can conclude that the company, by mistake overdue its domain, has a chance to return it using the UDRP procedure, but for this you need to have very good reasons: the rights to a trademark used in the domain name and evidence of intellectual rights violations property in the actions of the buyer. It is also very desirable that the domain name is not a dictionary word. But isn't it easier to extend the registration of the domain in advance in order to protect yourself and your company from similar incidents?
In the first case, Jeremy Sejm, the owner of the iSound.com domain could not regain the domain .
Events developed as follows. At the end of 2011, J.Seym bought from the previous owner the rights to the ISound trademark together with the website and the domain name iSound.com for $ 31,000. Soon he decided to resell the domain for profit and for two years negotiated with the American company i.Sound (point - The only difference in the brand name is one of the fastest growing manufacturers of audio players and accessories for video games.
')
The domain owner requested an exorbitant price of several million dollars, based on the fact that domain names with the prefix "i" are related to Apple products, and therefore their value is very high. In particular, he referred to the sale of iCloud.com for $ 4 million.
But one day something unexpected happened: the domain registration expired and another person intercepted it, from whom i.Sound bought it - of course, at a much lower price (the exact amount is not yet known).
After that, Jeremy Diet appealed to WIPO with a complaint demanding the return of his rights to the domain name. According to him, he was not going to stop registering a domain, and he did not receive any notifications about the end of the registration period. He also explained his domain rights by the fact that he is the legal owner of the iSound brand.
But his arguments did not satisfy the commission. Plaintiff failed to prove that he used the iSound brand in any way in his business. The only thing he presented as evidence is a few old screenshots from the site. Most of the time J. Sejm either kept the site in an inactive state or placed ads on it, including with the i.Sound brand. Whereas i.Sound is a promising emerging company, known both in the US and in other countries. The presence of a dot in the brand name (an invalid character in the second-level domain) also cannot be a reason to return the domain.
Therefore, the commission considered that the defendant is the legal owner of the domain and decided to refuse the plaintiff in his claim.
In the second case, the company from Stockholm Intrac Group AB managed to recover the expired domain intrac.com
Since 2004, Intrac Group has owned the Intrac brand and has several sites in other domain zones: .se, .ee, etc. At the beginning of 2013, she mistakenly did not pay for the renewal of her registration on time, and her domain was bought out by a third party. Intrac filed a complaint with him at WIPO, but he did not respond to the letter. Later it turned out that he, seeing that the domain contained a trademark, tried to resell the domain as soon as possible. And the buyer was found - it turned out to be a user from Korea, who purchased it for $ 21,500.
The Commission noted that this domain redirects to the website intrac.biz, which has no relation to the company Intrac. At the same time, the new owner has no right to use the Intrac trademark, and the domain name itself is not a dictionary word (it does not exist in either English or Korean). According to the respondent, Intrac is an abbreviation of the name of the company Information Technology Links Col, with which he cooperates, and in the future he planned to create a website on the intrac.com domain about its services. But he did not provide any evidence of this.
Based on these facts, the commission decided that the defendant has no rights to possession of the domain intrac.com, moreover, he used it illegally, violating intellectual property rights. In this regard, the domain was returned to the previous owner.
Thus, we can conclude that the company, by mistake overdue its domain, has a chance to return it using the UDRP procedure, but for this you need to have very good reasons: the rights to a trademark used in the domain name and evidence of intellectual rights violations property in the actions of the buyer. It is also very desirable that the domain name is not a dictionary word. But isn't it easier to extend the registration of the domain in advance in order to protect yourself and your company from similar incidents?
Source: https://habr.com/ru/post/210158/
All Articles