In a recent decision, a complainant fell over because it could not or did not produce evidence that it owned a trademark and that the trademark was registered in its own name. This was avoidable, but the complainant lost a case that, for all we know, it could have won. There have been other cases that have failed because the Complainant did not produce evidence of its trademark. There are cases where this was treated as a Deficiency which was rectified before the case proceeded, but it would be worse if the claim was simply dismissed, as it was in the present case.
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There are also cases where the complainant has omitted to comply with another formal requirement which can lead to the dismissal of the case, as we will shortly see.
THE FIRST CASE: Vacasol GmbH v.O.M
WIPO Case DSE2019-0024 , 22 August 2019. Thanks
Know who owns the trademark rights
The German company Vacasol, petitioned to claim the domain name vacasol.se from another German company, O.M. (who did not respond in the matter) but failed to prove their rights to the relevant trademark – VACASOL. The petition was brought under an Alternative Dispute Resolution process, which did not apply the UDRP Rules in light of it being an accelerated proceeding, but the panellist necessarily looked to the relevant trademark rights and ultimately found that Vacasol was not the true owner of the EU registered trademark relied on by the complainant.
As in all domain disputes, Vacasol had to demonstrate standing to bring the claim, meaning that it had ownership of a trademark. Instead, it provided counterproductive evidence that the EU trademark relied on was actually owned by Vacasol International A/S – a related yet separate company and certainly not the Complainant. Naturally, if the petitioner is not the owner of the relevant trademark, the claim is destined to fail at first base. It also did not provide any evidence of common law rights to the trademark based on its usage in Sweden, which would have been sufficient evidence to demonstrate a right to the name.
If Vacasol had, first, kept track of its domain names more prudently and secondly, kept track of the trademark certification, the petition would not have been necessary or alternatively, the petition would have been brought by the right company and may well have succeeded.
Without wishing to be critical, it must surely have been the simplest thing in the world to get a copy trademark certificate from the Swedish authorities showing the registration of the trademark was in the Complainant’s name and then annexing it to the Complaint. If the Complainant was not the owner of the trademark, the proceeding should have been started in the name of the company that did in fact own the trademark or that had an interest in it.
THE SECOND CASE :AVK Holding A/S v. Best Web Limited,
Czech Arbitration Court
23 August 2019
The second case is one that The Hon Neil Brown QC arbitrated , together with his two colleagues Dr. Tobias Malte Müller ( Chair) and Dr. Thomas Schafft. The decision was unanimous and resulted in the case being dismissed, another loss for a complainant that could have been avoided.
The case is AVK Holding A/S v. Best Web Limited, a dispute over the domain name <avk.com>.
In this case, the complainant left out a formal but important item from its UDRP complaint. The Rules require a complainant to specify a mutual jurisdiction in case the unsuccessful respondent wants to take court action when the UDRP case is over. The way Rule 3(12) puts it is that the Complaint will
“State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; …”.
It has been said that the mutual jurisdiction requirement was included because, if an unsuccessful respondent wanted to sue to hold onto its domain name, the court in which it chose to sue might not have jurisdiction over the complainant to compel it to attend court. Thus Rule 3 (12) was adopted which meant that the complainant was forced to chose one jurisdiction or another and that it would submit to one of them if the respondent brought a court action. Mutual jurisdiction is defined in the Rules and it means, either, the location of the registrar’s office or the domain name holder’s address. Agreeing to this is the price the complainant must pay to be allowed to bring a UDRP claim.
For discussion of this issue, see WIPO Case No. D2003-0166,
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez.
Note that the Complaint must elect and state one or the other. It cannot say “both”, or “either”. The complainant in AVK Holding A/S v. Best Web Limited (supra) was even more creative and said: “as specified above”. The problem with this choice is that there was nothing specified above- or below, or anywhere else, about jurisdiction. What is worse, the Complainant was notified of the omission, but did not correct it. It was notified of the defect because the Respondent’s authorised representative and counsel, Muscovitch Law P.C. of Toronto, was astute enough to pick up the deficiency and note it to the Court, which asked the Complainant to rectify the omission and state a mutual jurisdiction. The Complainant did not respond to this request. The Panel itself then requested the Complainant to specify a suitable Mutual Jurisdiction, and to provide the submission statement required by Section 3(b)(xii) of the Rules. Again, the Complainant failed to comply with this request.
The Panel therefore had little alternative but to dismiss the Complaint and to order that the dismissal was without prejudice to the Complainant filing a new Complainant at a later date.
Again, this is an illustration of how a Complaint can fail because the Complainant itself has failed to provide all necessary evidence and failed to comply with a procedural requirement.
 See https://www.domaintimes.info/post/procedural-deficiencies-in-358-domain-name-arbitrations
In 9 of 358 cases studied above, the Complainant did not tender evidence of the trademark registration and this was treated as a Deficiency.