3 UDRP complaints that should not have been filed


Uniform Domain Name Dispute Resolution Policy (“UDRP”) is a simplified and efficient mechanism for resolving domain name disputes.

It allows to resolve domain name disputes between parties often located in different countries and sometimes on different continents. It is quite fast (usually between 60 and 80 days) and relatively cheap (the lowest basic fee among all UDRP providers is 800 Euro – Czech Arbitration Court, “CAC”).

No surprise it has become very popular since its introduction in 1999. However, UDRP has its limitations. UDRP is designed only for cases of the abusive registration of domain names and was not intended for all domain name disputes.

In this note I look at three UDRP disputes where complaints were doomed from the outset.

<maintests.com>, WIPO Case No. D2022-1700 

Complainant relied on various “ACT” trademark registrations, but the disputed domain name was <maintests.com>.

Under the first UDRP element the disputed domain name should be identical or confusingly similar to a trademark in which the complainant has rights.

Complainant filed the complaint because the disputed domain name resolved to a web site “that used to make available for download copies of ACT practice tests and made available for downloads copies of practice tests from other providers” and complainant succeeded in an earlier UDRP case against the same respondent in 2021 over domain name <crackact.com>.

Complainant also claimed disputed domain name infringed upon Complainant’s trademark and copyright.

The Panel found no confusing similarity between its “ACT” trademarks and the <maintests.com> domain name and its reasoning can be summarized as follows:

–       There is no resemblance between the disputed domain name and the “ACT” marks;

–       Content of the website is not a substitute for a notion of confusing similarity;

–       Claims of copyright infringement do not fall within the scope of UDRP.

This case illustrates that even if there is a potential IP infringement on a website by the disputed domain name, if the domain name itself is not identical or confusingly similar, there is no sense in going via the UDRP route.

<alfaleads.com>, WIPO Case No.  D2019-3089

Complainant, a company organized under the laws of Hong Kong, China and active in the online advertising industry relied on its “Alfaleads” trademarks registered in 2018 and 2019. Respondent is a US individual and did not respond.

Respondent registered the disputed domain name in 2012 and the disputed domain name redirected to a website at “www.alfawassermannus.com” run by “Alfa Wassermann Diagnostics Technologies, LLC” with domicile in the United States in which the Respondent was a Vice President.

Complainant came up with the following arguments on both second and third elements:

–       Respondent never used or tried to use the disputed domain name since its registration in 2012,

–       Respondent “Perfect Privacy LLC” is well known as a professional cybersquatter, a party to numerous previous UDRP proceedings and

–       When Respondent “Perfect Privacy LLC” was notified of the Complaint, it decided to transfer the disputed domain name to Respondent Frank Kube , “Vice President of Global Information Technology” (Global IT) at “Alfa Wassermann Diagnostics Technologies, LLC”.

Complainant erroneously decided that privacy protection service was an initial respondent and then it transferred the domain name.

On the second element the Panel noted that:

–       “the disputed domain name undisputedly is resolving, and apparently has been doing so for quite some time, to the commercially active website “www.alfawassermannus.com” of the company “Alfa Wassermann Diagnostics Technologies, LLC” for which Respondent acts as “Vice President of Global IT”;

–       “the company name “Alfa Wassermann” of the legal entity to whom the disputed domain name commercially seems to belong, directly relates to the term “alfa” as it is reflected in the disputed domain name together with the dictionary term “leads” which has several meanings and does not specifically point e.g., to Complainant at all. This may well be regarded as an indication that the disputed domain name is and was used by Respondent in connection with a bona fide offering of an Internet service even well before Respondent got notice of this dispute”.

On the third element the Panel’s conclusion was the following:

–       “Respondent registered the disputed domain name already back in 2012, when Complainant, according to its own contentions, had not yet even started its business, and had not yet acquired any rights in relation to the term “Alfaleads”;

–       “The case file does not contain any indication whatsoever that the registration and making use of the disputed domain name at any point of time targeted at Complainant, its business or its ALFALEADS trademark”.

<remplanor.org>, CAC Case No. 101757, decision date – February 4, 2018

In <remplanor.org> the parties were business partners first and Respondent registered the disputed domain name on 27 September 2012.

Complainant, an association under French law, was formally registered on 27 October 2012.  Since that time the Complainant and the Respondent co-operated to create and operate a website for medical doctors under the disputed domain name.

However, the relationship between the parties deteriorated in 2017.

Complainant argued that it ordered and paid for both the disputed domain name and the corresponding website, and that Respondent acted as a mere technical service provider on behalf of Complainant. Respondent claimed that Respondent itself was the website “owner”, whereas Complainant was only entrusted with “managing” the website.

Complainant did not have any registered trademark rights in the “Remplanor” word and did not assert “common law” trademark.

The Panel noted that:

–       Complainant failed to prove its trademark rights (registered or unregistered) in the “Remplanor” word;

–       In the absence of trademark or service mark rights the Complaint cannot succeed;

–       The dispute between the parties was primarily a question of contract law and/or fiduciary duties. This type of dispute is outside the limited scope of the Policy. Such disputes shall be decided before the national (French)courts.

This case illustrates two simple rules:

i)               To succeed under UDRP you need a trademark (not just any name) and

ii)             UDRP is designed only for cases of abusive domain registration and use and not for contractual or similar disputes.

Final thoughts

UDRP is a great tool that helps trademark owners in cases of clear-cut cybersquatting.

However, its scope is limited and as noted in the “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” (“ICANN SECOND STAFF REPORT) UDRP was designed “for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties)…”

UDRP was not intended to resolve more complex domain disputes or disputes unrelated to use of a trademark in a domain name.

The cases above should be a reminder to both potential UDRP complainants and their counsels that UDRP is not suitable for every domain name dispute.

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(part of SM Legal Group)
Proudly crafted by MWEB