A UDRP was recently filed against the valuable 3 letter .com domain name, UAX.com. The UDRP was filed at the World Intellectual Property Organization (WIPO), and the decision was published this morning. The panel found in favor of the domain name registrant, and also found that this was a case of Reverse Domain Name Hijacking (RDNH).
Not only do I think this was the right decision, but I also think there is some helpful language for domain investors that can be referenced in a future UDRP defense or to head off a UDRP filing.
The complainant in this UDRP is Universidad Privada De Madrid, S.A. (UNIVERSIDAD ALFONSO X EL SABIO -UAX), and the registrant is Domain Capital, which was well represented by Jason Schaeffer of ESQWire.com. According to the decision, the complainant has “two registered trademarks which incorporate the term “UAX.” While not disputing the validity of the trademarks, the respondent’s counsel stated “that the Complainant does not have a registered trademark for the letters “UAX” alone, adding that there is no evidence that the Complainant’s purported use has acquired secondary meaning and that global consumers associate the term exclusively with the Complainant.” This turned out to be an important argument to make.
Notably, the panel emphasized the need for a complainant to have a well-known trademark in order to be successful in a UDRP. For instance, just because a local llama farm in Lafayette, Louisiana is called Little Larry’s Llamas, that complainant should not be able to use the UDRP to take the valuable LLL.com domain name from a domain registrant because its brand is not famous. In discussing this, the panel also noted the rights of a domain registrant to sell an “inherently valuable three letter domain name…” Here’s an important excerpt from the decision:
“However, the Complainant’s rights are in no way on a par with a famous three character word mark such as BMW or IBM, which could be argued to transcend any particular field of activity, exclusively denoting the mark owner concerned, and thus might underpin a successful claim of “willful blindness” in the right circumstances. On the facts of this particular case, the Respondent’s wish to invest in and resell an inherently valuable three letter domain name seems to the Panel to be a reasonable activity that does not appear to be motivated or actuated by bad faith or, for that matter, to have been willfully blind to the rights of others. As the panel noted in S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2014-0327, with reference to various decisions under the Policy, carrying on business in registering descriptive or generic domain names is not of itself objectionable, nor is offering such domain names for sale.”
Another aspect of the decision I thought was well stated was when the panel rebuffed the complainants claim that it was the only entity that could have an interest in this particular domain name. From the decision:
“The Panel is satisfied on the basis of the present record that the Complainant’s assertion that no-one other than the Complainant or its Foundation could have an interest in the term “UAX” is considerably overstated. In the first instance, the Respondent shows several examples of the term in use by other parties and to refer to various concepts including technical standards.”
Likewise, the panel also cited a previous UDRP in ruling that more than no single entity can claim that it is the only entity that can use a short acronym:
“Furthermore, the Panel here agrees with the general remarks of the panel in SK Lubricants that ‘a three letter acronym of this type is likely to be of general application to many interested parties, and no one party is likely to be able to claim a monopoly on use of the acronym in all fields of activity.”
Finally, in ruling that this was a case of RDNH, the panel noted that the complainant should have been aware of how unlikely it would be to prevail in a UDRP involving a three letter .com domain name. Furth, the panel cited communication from the respondent’s counsel to the complainant’s counsel as additional warning against proceeding with the UDRP. The complainant did not withdraw, and the panel decided it was an abusive UDRP:
“Based on the trend of past cases under the Policy, the Complainant and/or its counsel should have been aware that a complaint regarding a three letter acronym domain name was likely to face extremely challenging hurdles, particularly from an evidential perspective. Furthermore, in its detailed reply to the Complainant’s cease and desist letter, the Respondent’s counsel identified the issues which the Complainant’s case was likely to face and cited relevant decisions showing clearly how past panels had approached these. All of this should have alerted the Complainant to the fact that its Complaint did not have reasonable prospects of success.”
This UDRP was the right decision, and I think the language should be helpful to domain investors, particularly those with acronym domain names.