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Recent Case Notes & Commentary

CLAIMING A WELL-KNOWN TRADEMARK? BE SURE OF IT AND : WHEN WILL RDNH BE FOUND?


IBA SA, Belgium v. Ousmane Ba, United States of America


WIPO Case No. D2023-3619


RATIO


Failure to establish even one of the elements set out in Paragraph 4(a) of the UDRP will defeat a domain dispute claim. In this case, the Complainant’s trademark IBA, which was the basis of the action to obtain the disputed domain name <iba.com>, was not considered to be well-known and was generic. Therefore, it was decided by the Panelist that the Respondent had not registered the disputed domain name <iba.com> in bad faith to capitalise on the business of the Complainant’s business. Hence, having failed to satisfy Paragraph 4(a)(iii) of the UDRP, the Complainant’s complaint failed.


Moreover, the complaint having deliberately been brought in bad faith to harass the Respondent, led to a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant.


BACKGROUND


The Complainant (“IBA SA”), a Belgian company, brought the present complaint against the Respondent. The Complainant claimed that it was founded in 1986, as a spin off from a Belgian university and is engaged in the business of developing technology for treatment of cancer. The Complainant is the registered proprietor of word marks featuring IBA that were registered in 2005. It was also the registered proprietor of an IBA device mark that was registered in 1990, and which expired in 2020.


The Respondent registered the disputed domain name <iba.com> in 1995.


The Complainant alleged that the disputed domain name was identical to its IBA trademarks, as well as confusingly similar to its other trademarks that contain the element IBA. The Complainant seems to have attempted to buy the disputed domain name earlier in 2001 and had contacted a broker for such purpose, but aborted the transaction when the broker responded that a higher price would be required for the domain name than the Complainant was prepared to offer. The Complainant further alleged that the Respondent was neither making a bona fide commercial use nor legitimate non-commercial or fair use of the disputed domain name. The Complainant further claimed that its trademark IBA was well-known, and therefore the Respondent ought to have been aware of it. In the Complainant’s submission, the Respondent’s renewal of the disputed domain name was further evidence of bad faith.


The Respondent submitted that it was in the information systems and telecommunications business, and that it had traded as “International Business Automation” since 1995. The Respondent provided a detailed resume listing the organisations for which it had worked for or with over that period. The Respondent claimed that ‘Iba’ was the name of both his son and father, and also that there were several other organisations that used IBA as an abbreviation for their business, including IBA Inc (a US dairy company), IBA SA (a French soap manufacturer) and IBA AG (a manufacturer of measurement systems). The Respondent also provided evidence of use of its website <www.iba.com> since at least 2000 (which was earlier than the date on which the Complainant’s trademark was registered). The Respondent also stated that it only became aware of the Complainant when it reached out to purchase the domain name back in 2001, something which the Complainant had deliberately omitted to tell the panel, instead passing off the communication as having occurred only between the Complainant and its broker.


Deeming the complaint to be in bad faith and intended to harass the Respondent, the Respondent also sought a finding of RDNH.


DECISION


The Panelist reviewed the matter and relied on Paragraph 4(a) of the UDRP to decide the dispute.

Identical and/or confusingly similar


The Panelist found that the domain name <iba.com> was confusingly similar to the registered trademark IBA of the Complainant. Relying on Section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the Panelist stated that it was irrelevant that the domain name was registered before the IBA trademark existed. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP, in all cases. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.

Rights or legitimate interests


Even though the Respondent provided limited evidence with regard to the use of the disputed domain name in connection with its business under the name “International Business Automation”, such limited evidence seems to have been adequate to establish that the domain was used by the Respondent since 2000. However, in light of the subsequent finding on the point of bad faith, this element did not turn out to be so relevant.


Registration and Use in Bad Faith


Even though the Complainant provided some details of its revenue that seemed to indicate that it is a large and successful business, such details do not establish that the trademark IBA was well-known or that it had developed a reputation outside the areas in which the Complainant’s business operated, unlike as seen in Bayerische Motoren Werke AG v. Domain Admin, WIPO Case No. D2004-0089 where the Panel concluded “The evidence presented by the Complainant demonstrates without doubt that the Complainant’s trademark BMW has long been a federally registered trademark in the United States. The mark must be considered to be famous and has substantial value on account of its recognition and goodwill”.


The term “IBA” is not inherently distinctive and many organisations make use of the acronym. The Panelist referred to Section 3.2.2 of the WIPO Jurisprudential Overview 3.0 which states that, where the Complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name, if the Respondent can credibly show that the Complainant’s mark has a limited reputation and is not known or accessible in the Respondent’s location, the Panelist may be reluctant to infer that the Respondent knew or should have known that the disputed domain name would be identical or confusingly similar to the Complainant’s mark. The Panelist concluded, therefore, that there was no bad faith involved in the Respondent’s adoption and registration of the disputed domain name.


The Panelist found that since the Complainant had not proven the third element as set out in Paragraph 4(a) of the UDRP, the complaint failed.


REVERSE DOMAIN NAME HIJACKING


The Panelist further concluded that the present action was brought by the Complainant in bad faith to harass the Respondent under UDRP Rules ¶ 15(e). In the view of the Panelist the complaint should never have been launched since the Complainant was professionally represented in this matter and should have been better aware that the complaint had negligible chances of success, especially considering that its trademark IBA was not a well-known trademark. The Complainant had further misrepresented the facts of the case by omitting to inform the Panelist that it had reached out to the Respondent in 2001 to purchase the disputed domain name but backed out when the Respondent asked for a higher price than what the Complainant was prepared to pay, something which the Respondent was within its legitimate rights to ask.


The Panelist went on to rely on the following case laws:


(i) Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151 - “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”

(ii) Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202 - An allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.

(iii) Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 - Whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration in determination of RDNH.


Based on the above, the Panelist indeed found that there had been a case of RDNH.


EDITOR’S NOTE


Even though Paragraph 15(e) of the UDRP states that a complaint brought in bad faith or to harass the Respondent can lead to findings of RDNH, it is pertinent to also note Section 4.16 of the WIPO Jurisprudential Overview 3.0, which provides that panels deciding domain dispute matters will issue a finding of RDNH on certain predetermined conditions, not all of which are detailed here to keep this note brief, several of those specified conditions relevant to this case are:


(i) Facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements: The Complainant had clear knowledge of the Respondent’s lack of bad faith in registering the disputed domain.

(ii) The provision of false evidence, or otherwise attempting to mislead the panel: The Complainant had tried to mislead the panel by claiming that it had contacted a broker to purchase the disputed domain name in 2001, whereas, it had actually reached out to the Respondent to acquire the domain name, a fact which the Complainant had omitted in its complaint.

(iii) The provision of intentionally incomplete material evidence: The Complainant did not provide up-to-date details about its business but exhibited accounts and other materials that were many years old.

(iv) Filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis: The Complainant filed the present complaint after an aborted attempt at purchasing the disputed domain name from the Respondent in 2001.


Therefore, in RDNH determinations cases, it is important to weigh up all the circumstances of the case including the provisions of the UDRP - and the provisions of the WIPO Jurisprudential Overview 3.0 are a useful guide.


Interested readers can read up the WIPO Jurisprudential Overview 3.0 on the link provided herein WIPO Jurisprudential Overview 3.0.