Recent Case Notes & Commentary

BUYING A DOMAIN NAME THAT INCORPORATES ANOTHER’S TRADEMARK

Rolyn Companies Inc. v. Mediablue Inc.

WIPO Case No. D2018-0072

4 April 2018


Rolyn is another of an increasing number of cases we see these days where a trademark owner is seeking to obtain a domain name that is a generic or common word or name and which happens to be the same as  the claimant’s own trademark. In this case, the trademark was ROLYN and the domain name was the same, <rolyn.com>, so it was only natural that the trademark owner should want this ideal domain name and, indeed had tried several times to buy it.


Not surprisingly, the trademark owner/complainant honed in on the fact that the domain name was exactly the same as its trademark and that, therefore, you could assume the respondent had acquired it improperly.


In all such cases, however, the claimant / trademark owner has a tough job showing that the respondent has no right to register the domain name and that it registered and used the domain name in bad faith to make money out of it. Often, the facts are not just there to make out that case and the trademark owner loses, as it did in this case.


Like all cases, this one depended on the facts. When all the facts were put together, the three person panel (albeit only by a majority of 2/1) found that the evidence was just not there to show impropriety and bad motives on the part of the domain name owner.


We urge you to read the decision in detail, as a good example of the quantity of facts, some of them inconsistent, that emerge in such cases and where the panel has to do a balancing act and decide if the facts show the respondent has acted properly and is entitled to keep the domain name or whether the whole thing has been designed to deprive a trademark owner of the domain name by stealth or impropriety of one sort or another. That is why we say read all of the decision and other cases like it and see how the facts balance out. But in the meantime, here is a summary of the sort of facts that come up and how they carry (or lose ) the day.


On the complainant’s side, it had several trademarks for ROLYN and eight domain names built around “rolyn”. Therefore, it seemed to say, “end of subject”. Also, it said, look at how unique the name is and the fact that it was not a common generic or dictionary word. What was more, the registrant (the complainant) was itself offering the domain name for sale.


On the respondent’s side, it could point to the fact that it bought the domain name legitimately and at auction and when the previous owner had abandoned it. Moreover, after some painstaking research, it emerged that Rolyn was actually both a given and surname, although not a popular name, so it was akin to a dictionary or generic word. So its legitimacy came in part from the fact that at least a few “Rolyns” might want to buy it for family purposes. And there were quite a few commercial uses of Rolyn around the world. Also, the respondent had never used the name improperly to refer to or harm the complainant, its trademark or its products; in fact it had never heard of it, so it was not targeting it or trying to confuse the internet public or trade off the goodwill of the complainant’s trademark. And there was nothing wrong is selling a domain name if you were entitled to it. None of the evidence showed that the respondent registered the domain name to target the trademark owner.


When all those facts came tumbling out, you can understand how the majority of the Panel[1] concluded that the complainant had not proved bad faith registration or use and had not proved that the respondent‘s acquisition of the domain name was other than rightful and legitimate. The respondent therefore kept the domain name.



[1] Including the Hon Neil Brown QC