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Recent Case Notes & Commentary

DOMAIN NAMES - A Classic Case

Is there such a thing as a normal or regular domain name case?  Unlikely. But many of them fall into a similar pattern. So we thought that we would take you through a typical case so that you can see how some of the issues are dealt with by the arbitrators or panellists who decide these cases. Here, at the outset, we should mention that one of the good things about domain name arbitration is that all of the decisions are public and are available for the public to read. They are posted on the website of the provider with whom the complaint has been filed. This is of course different from traditional commercial arbitration where the decisions are private and are generally never seen except by the parties and their lawyers, unless by some mysterious process they find their way into public view . The advantage of having decisions made public, at least with domain name cases, is that although the decisions are not precedents, practitioners can read other decisions and assess their chances of winning. The large number of decisions also has the effect getting more consistency in decisions. Here, then, is a “typical” decision.

The case is John Holland Group Pty Ltd v. Whois Privacy Protection Service by / Yoshio Maeda. WIPO Case No. D2015-2271. The reference is to the case being filed with WIPO , the World Intellectual Property Organisation, whose cases have the “D” reference. John Holland is the well known Australian construction and building company.

The procedure is that the Complainant has to show that it has rights in a trademark and that the domain name registered under the Respondent is identical or confusingly similar to the trademark relied on. The Complainant files a claim with one of the accredited providers of domain name arbitration services, WIPO, the National Arbitration Forum, the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court or the  Arab Centre for Domain Name Dispute Resolution.

The Complaint has to be in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and Rules (“the Rules”), ICANN being the non-profit company that runs the naming system for the internet from Los Angeles. You can read the Policy and the Rules on ICANN’s website:

Usually, the Complainant's objective is to have the disputed domain name transferred from the Respondent to the Complainant, although complainants sometimes ask only for the cancellation of the domain name rather than its transfer. The basis of the claim is threefold, that the domain name is identical or confusingly similar to the Complainant’s trademark, that the Respondent does not have a 'right or legitimate interest' in the domain name, sometimes called “cybersquatting”, and that the domain name was registered and is being used in bad faith , for example by using the domain name for a website used for directing business away from the Complainant towards the Respondent.

There are of course many cases where the Respondent in fact has rights or legitimate interests in the domain name and has not registered or used the disputed domain name in bad faith, which is always decided on the facts of the individual case. The Panel (compromised of a sole panelist or three personal panel) will then decide whether the case has been made out. If the Complainant fails, the Respondent may successfully argue that the case should never have been started because of 'reverse domain name hijacking' or 'reverse cybersquatting', where the Complainant has attempted to secure a domain name through a false claim against the rightful owner.

In the John Holland case under consideration, the panel found that the Respondent did not have rights or legitimate interests in the domain name and had registered and was using the disputed domain name in bad faith. As noted above, John Holland Group Pty Ltd is one of Australia's leading engineering, contracting and service providers to the infrastructure, energy, resources and transport services sector and it had a registered trademark, JOHN HOLLAND.

The disputed domain name <> was registered by the Respondent on December 11, 2014 and resolved (i.e., was linked) to a website carrying advertisements in the Japanese language relating to lactic acid and bacteria, quite clearly not connected with infrastructure and transport.

According to the Policy and Rules, the Complainant must describe the grounds on which the complaint is made including, in particular, 4 (a)(i) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and (iii) why the domain name(s) should be considered as having been registered and being used in bad faith

The Panel held that the disputed name contained the JOHN HOLLAND mark in its entirety, and "the fact that a domain name wholly incorporated a complainant's registered mark was sufficient to establish identity or confusingly similarity for purposes of the Policy." See Six Continent Hotels Inc v. The Omnicorp, WIPO Case No. D2005-1249. That is a good first point to note about this case.

Further, the addition of the term "rail" was found to increase the confusing similarity between the domain name and the trademark as it referred to an industry sector in which the Complainant was active.

So the Complainant won Round 1.

The domain name was also registered after the Complainant registered and started to use its JOHN HOLLAND mark and as such, the use of the domain name was held not to constitute a legitimate or fair use. What is clear is that this decision favours the Complainant because a strong case for the Respondent was simply not made out. In fact, no response to rebut the Complainants prima facie case was offered at all.

Note that the Panel also said: “Further, the disputed domain name refers to a website which also includes advertisements in Japanese relating to lactic acid bacteria. It also contains links to other commercial websites. Such use does not constitute a legitimate or fair use according to the Policy.”

The Panel held that "in the absence of any Response to rebut the Complainants prima facie case, and in view of the Respondent's lack of interest in maintaining the disputed domain name, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy."

Thus, the Complainant had also won Round 2.

As to bad faith registration and use, the Complainant's mark was unique and had been used for many years, so the choice of the domain name was found to be intentional and not random. "Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorisation and no legitimate purpose to use the mark is a strong indication of bad faith." See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry - D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.This is an important point and one that can be used to advantage in many cases, if the evidence is there.

The panel also relied on the fact that when the Respondent registered the domain name it must have known of the existence of John Holland’s trademark as it was unique and well-known.

The improper use of the domain name, linked as it was to the Respondent’s website, also showed bad faith , because , as the Panel put it, “...the Respondent falsely creates the impression that it is associated with the Complainant, such conduct disrupts the Complainant’s business, and supports a finding of bad faith. “

Having proved bad faith the Complainant had thus proved all 3 elements which a complainant must always do.

Another interesting point that arose was the use of language in UDRP proceedings, i.e., in what language should the proceeding be conducted? Generally the language of the administrative proceeding will be the language of the Registration Agreement under which the Respondent bought the domain name, which in this case was Japanese. But the Complainant requested English to be the language of the proceeding rather than Japanese, to which the Respondent did not reply. The Panel noted that there is a practical policy exception to the general language requirement set in paragraph 11(a) of the Rules and held by a majority of UDRP panels that "in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement".

The Panel also noted that “...a respondent’s failure to respond to (the) notices ( ...sent to it...) should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”

Thus, the Panel held that English should be the language of the proceeding.

Finally, although the Respondent had failed to file any formal response to the Complaint at all or to comment or object to the Complainant's language request, it had sent numerous emails to the WIPO Centre indicating its willingness to transfer the disputed domain name. Often, when this happens, the panel will not proceed with the usual analysis of the three elements, but simply order a transfer. In the present case, however, the Panel went on with the case as a regular one and examined all the issues, probably because of all the circumstances and because the registration of the domain name had expired and the Complainant needed an order before the registrar would transfer the domain name.

The result, like many domain name disputes of this kind, especially, but not always, when the case is undefended, was that the Panel ruled in favour of the Complainant and ordered the disputed domain name be transferred to the Complainant.

We hope that this case note has introduced to the basic outline of domain name cases and we encourage you to read more decisions to see how they are handled.

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