Recent Case Notes & Commentary

COURTS AND THE UDRP: A SEPARATION OF POWERS: EVIDENCE IN ONE DOES NOT BIND THE OTHER


Universa Investments v Alexander Borodich

20th August 2020

WIPO Case No. D2020-1567

A US financial services company has sought to rely on a court order it received in its favour as evidence in a subsequent UDRP proceeding. Universa Investments v Alexander Borodich is a succinct reminder that UDRP panels are not bound to apply or enforce the decision of a court in trademark disputes when dealing with domain name registrations (see for example, Pret A Manger (Europe) Limited v. Prettogo LLC, WIPO Case No. D2018-0782).

Universa Investments has owned the UNIVERSA trademark since 2019. The Respondent company, Universa Corporation, is based in Russia and offers blockchain consulting services. Respondent registered the domain name <universa.com> in 2001 and <universablockchain.com> in 2017 – both of which were the subject of the UDRP proceeding.

A US court had previously found that the Respondent’s use of the Complainant’s UNIVERSA trademark in the previous case of another and separate domain name, <universa.io>, was trademark infringement. The complainant apparently presumed that it would be a short step for the Panel to make a finding of cybersquatting in the case concerning the two disputed domain names. Its mistake was believing that a finding of trademark infringement by a US Court would naturally result in a UDRP win because both concerned the same trademark. These are of course separate issues, evidence in one case is not evidence on any other case and UDRP Panels have no jurisdiction to rule on questions of trademark infringement.

Universa Investments v Alexander Borodich shows that a Respondent can lose a trademark case but win a domain name case concerning the same trademark, which the Respondent in the current case did. That may seem odd, but domain name rights do not have the same exclusive characteristics as trademark rights vis a vis two competitors in the same industry (which the parties in this case were not). On that point, Panellist John Swinson says, “there may be two entities in different countries who both use the same trademarks...There is no justification under the Policy to transfer a domain name from the first-in-time registrant who has rights to another entity who may also have rights.”

The findings of courts can be admitted as evidence in UDRP claims but they do not have precedential value in that context. Nor would they be conclusive. The key consideration regarding domain name disputes is often one of timing and bad faith but those are not key considerations in trademark disputes. Courts and UDRP Panels necessarily deal with different forms of evidence to that extent. Don’t be like Universa Investments and assume that trademark rights are the ‘be all and end all’.

When the Panel directed its attention to whether the Complainant had proved the 3 elements under the UDRP, it found that the Respondent did have a right and legitimate interest in the domain names, because the Respondent was using the domain names for a legitimate business. It also found that the Respondent had not registered and used the domain names in bad faith, because of our old friend, complete lack of evidence of either.

PS Did you notice the country code of the domain name that was the subject of the court proceeding: <universa.io>? British Indian Ocean Territory.