Parties from Serbia in UDRP disputes: selected cases


WIPO Case No. D2021-4065, disputed domain name <>

The Disputed Domain Name was registered on September 2, 2019.

Respondent, an individual from Serbia, was using the Disputed Domain Name in connection with a website for “International Strategic Consulting” that promoted the services of Respondent.

When Complainant contacted Respondent to inquire about the Disputed Domain Name the response was:

 “Offer me an amount I won’t be able to refuse”.

Respondent did not file a response.

Transfer of the Disputed Domain Name to Complainant was no surprise.

The Panel found that “Linkedin” marks predated registration of the Disputed Domain Name and the earliest of those registered rights go back some 13 years before the registration of the Disputed Domain Name. The Panel also found “Linkedin” mark to be well known.

The Disputed Domain Name was confusingly similar to the trademark. No rights or legitimate interests were present in this case.

As regards bad faith taking into account Respondent’s response and suggestion to make an offer “ I won’t be able to refuse” the Panel found that Respondent registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant for valuable consideration likely in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

Besides, the Panel also found that by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s “LINKEDIN” trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or the services offered on that website.

Conclusion: this case illustrates a classic example of cybersquatting UDRP was designed for (“deliberate, bad faith abusive registrations” as stated in the “Final Report of the WIPO Internet Domain Name Process”, see e.g. par. 166).

Respondent registered the Disputed Domain Name because of Complainant and its well-known “LINKEDIN” mark to take advantage of the trademark and its reputation.

Registering a domain name that includes third party’s mark for the purpose of exploiting this mark may very well lead you to a UDRP action and rather than getting “an offer you will not refuse”, you will likely lose your domain name.

CAC Case No. 101776, disputed domain name <TANJUG.INFO>, decision published on February 13, 2018

Complainant was a news agency from Serbia, once famous in the times of the former Yugoslavia but still active these days. Complainant was the owner of a Serbian national trademark for the word “Tanjug” with priority of September 9, 2014.

Respondent, also based in Serbia, registered the Disputed Domain Name on May 31, 2017.

The Disputed Domain Name was used as a platform for the publication of news and other media content by Respondent.

The Panel found for Complainant and ordered transfer. Respondent defaulted.

The Panel did not have any troubles with the first element. As regards the second UDRP element, the Panel noted: “the disputed domain name displays highly similar content to the Complainant’s website. Competing use is not considered a bona fide offering of goods or services, nor a legitimate non-commercial or fair use.” There was no response and the Panel concluded that ”the Respondent has no rights or legitimate interests in respect of the disputed domain name.”

On the third element (“Bad Faith”), the Panel took into account inter alia previous behavior of Respondent in Serbia, namely “Respondent also tried to register an own trademark “Tanjug Info” which has been denied by the Serbian Intellectual Property Office because it was identical or similar to an already registered mark”.

What also mattered to the Panel is the fact that the “Tanjug” trademark is “an acronym of its name and therefore not being used in any other language. It appeared from the evidence that a website operated under the disputed domain name contained content similar to the content provided by Complainant under its domain name. Therefore, “Respondent has been taking unfair advantage of Complainant’s trademarks reputation by misleading the Internet users to believe that the website operated under the disputed domain name is associated with Complainant.”

It is worth noting that there had been a ccTLD dispute between the same parties in Serbia over a .rs “Tanjug” domain name prior to this UDRP dispute and Complainant had prevailed as well.

This case illustrates that UDRP remains a popular dispute resolution mechanism even in cases where both Parties are from the same country and where Complainant could have used traditional court proceedings to recover domain name.

However, court proceedings are often not so fast and can be unnecessarily complicated. If your case is straightforward and your goal is to recover a domain name, UDRP is a better option.

WIPO Case No. D2009-1277, disputed domain name <>

This dispute was decided by a 3-member Panel and Respondent filed a response.

This was a dispute between parties with competing rights.

Complainant, Office Holdings Limited, was a United Kingdom company that had operated retail stores in the UK under the name OFFICE LONDON and claimed it had been doing so since 1981. Complainant relied on its CTM registrations for the marks “Office London” and “Office”, the earliest one filed in 1996 and registered in 2000.

Respondent was a Serbian company operating “Office Shoes” retail stores in Serbia since 1999 and claimed various “Office Shoes” trademarks in Europe including such countries Serbia, Romania, Hungary, and Montenegro.

It also provided information about its “Office Shoes” stores in Serbia, Slovakia, Czech Republic, Hungary and other countries.

There was some history of legal battles between the parties as Complainant initiated opposition proceedings against some of Respondent’s trademarks in Europe.

The Panel considered that Complainant proved the first UDRP element and failed the second one (“Rights and Legitimate Interests”). The Panel decided not to analyze the bad faith element.

On the rights and legitimate interests, the Panel noted the following: “Complainant asserts that some of Respondent’s use of OFFICE SHOES constitutes trademark infringement, that Complainant has succeeded in opposing Respondent’s trademark applications in certain of those countries, and that Complainant has obtained an injunction against Respondent’s use of that mark in Poland. However, Respondent has submitted evidence of its trademark rights in Serbia and Montenegro, countries that are not within the European Union…Complainant cannot claim any trademark rights in these three countries by virtue of its CTM registration, and Complainant has not submitted any evidence of any other basis for claiming trademark rights in those countries. Because Respondent owns trademark rights in these countries for the OFFICE SHOES mark and is in fact using that mark in connection with a number or retail establishments, the Panel concludes that Respondent has rights and a legitimate interest in the domain name that contains its OFFICE SHOES trademark.”

While the Panel noted certain resemblance between the Parties’ marks and logos and that there was a possibility of some copying, nevertheless, the Panel pointed out that trademark rights are territorial and “if Complainant failed to take appropriate steps to secure trademark rights in certain countries, then it cannot in this proceeding complain that Respondent has established such rights.”

This case illustrates two major points:

i)               If you as a Respondent have rights or legitimate interests in your domain name, e.g. you already have an established business and trademarks, you should respond and defend your domain name and

ii)             UDRP is not designed to deal with disputes between parties with competing rights. This was reflected in the history of UDRP, in particular, ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, posted on October 25, 1999 (ICANN Second Staff Report). ICANN Second Staff Report underscores that “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) and calls for registrars not to disturb a registration until those courts decide…The policy relegates all “legitimate” disputes–such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name–to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure” (see par. 4.1. c.).

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(part of SM Legal Group)
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