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Recent Case Notes & Commentary

NO RESPONDENT? NO PROBLEM? YOUR COMPLAINT MIGHT STILL FAIL

Element Logic AS v. Lane Allen

 

WIPO Claim Number: D2023-4411

 

December 11, 2023

 

RATIO

 

Relief was denied to the Complainant as it had failed to establish that the Respondent had registered and used the domain name <elementlogic.com> in bad faith. Further, the domain name was registered by the Respondent much prior to the date of adoption of the trademark on the basis of which the Complainant had brought the complaint, therefore, the Complainant had no legitimate grounds for the action. In addition, Reverse Domain Name Hijacking (“RDNH”) was found against the Complainant, as the Complainant’s case was falsified and exaggerated, since the Complainant was tacitly aware of the Respondent’s prior rights in the domain <elementlogic.com>, and therefore, the complaint had clearly been brought in bad faith.

 

BACKGROUND

 

Element Logic AS (“the Complainant”), a Norwegian entity, was founded in 1985 as “Arkiv & Lager AS” and underwent a series of name changes to become “Element Logic AS” in May 2009. The Complainant also first registered to conduct business in Norway under the name “Element Logic” in 2006. The Complainant was the owner of various ELEMENT formative trademarks, the earliest of which was registered in Norway in 2007. The Complainant also owned a Norwegian Trademark for the combined word/figurative mark ELEMENT LOGIC, registered in 2021.

 

However, the domain name <elementlogic.com> had been registered on February 27, 2003. There was no response from the Respondent, so the matter proceeded ex-parte. The Complainant also produced Whols search results showing that on February 23, 2004, the disputed domain name was registered to an organization named “Stimuli Lab”, and the present Respondent was listed as the administrative and technical contact. By August 21, 2010 it was registered to the Respondent directly.  Therefore, it appeared that the Complainant has tacitly acquiesced to the fact that the disputed domain name was registered much prior to the Complainant’s  first use of the mark ELEMENT or any of its variants.

 

The Complainant contended that the disputed domain name was identical or confusingly similar to its trademark ELEMENT LOGIC, and the fact that the Respondent was not currently using the disputed domain name created confusion with the Complainant’s similar business name, thereby allegedly causing a presumption of bad faith. The Complainant also alleged that the Respondent made its website inactive, when the Complainant began to use Element Logic as its brand.

 

DECISION

 

Identical and/or confusingly similar

 

The Panel found that the Complainant had established its rights in the trademark ELEMENT LOGIC and that the entirety of such mark was contained in the domain name. Therefore, the disputed domain name was indeed identical or confusingly similar to the Complainant’s trademark, so the first element was satisfied.

 

Rights or legitimate interests

 

Considering the findings the Panel  would make on bad faith, it was not necessary to consider rights or legitimate interests.

 

Registration and Use in Bad Faith

 

The Complainant had to prove that the domain name was both registered and used in bad faith. The evidence showed that the domain name was registered by the Respondent a few years before the Complainant started using the trademark ELEMENT LOGIC, and even before the first any of the Complainant’s ELEMENT formative trademarks was registered. There was no evidence that the Respondent could have registered the disputed domain name with prior knowledge of the Complainant’s trademark or with intent to target those rights.

 

 The Complainant’s assertion that the Respondent made the website inactive after the Complainant’s usage of ELEMENT LOGIC came into being, is not relevant when it comes to determining bad faith.

 

Note also the implication in the decision that the Complainant might have done much better if it had proved, by evidence, a common law or unregistered trademark preceding the registration of the domain name instead of just hinting at it.


See, in that regard, our case note on THINGIFY, INC. v Ross Colquhoun.

 

Therefore, the Complainant had failed to establish bad faith- the third element under the UDRP. So the whole case failed.

 

REVERSE DOMAIN NAME HIJACKING (“RDNH”)

 

The Panel also found that the claim was brought by the Complainant in bad faith since it was aware or should have been aware of the Respondent’s prior right in the disputed domain name <elementlogic.com>. This was particularly so, as the Complainant was represented by counsel and panels expect a higher standard of presentation when this is so. Therefore, even though the Respondent had not participated in the present proceeding, and did not ask for the finding of RDNH, the Panel suo moto made a finding of RDNH in its favour.

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