In domain disputes, mere registration of a trademark doesn’t appear sufficient most of the time. Any party before claiming exclusive right to a mark, must first present that it has acquired notoriety in respect to those terms.
So Bold Limited, is a company based in the UK. The company provides web development services and uses the domain name SoBold.co.uk. The company however, was aggrieved over the domain name SoBold.com and filed a UDRP complaint against it.
The complainant claims UK trademarks over SOBOLD filed in November 2021 and registered in February 2022. The complainant claims that the domain name resolved to a platform that presented the domain name up for sale. The website noted that the concerned terms in domain name were used by over 15 public platforms. The complainant’s name was mentioned in one of those 15 public platforms. The complainant presents this as clear evidence of bad faith. The complainant also claimed the respondent being a habitual typosquatter.
The respondent registered the domain name in October 2021 at a Drop Catch auction. The domain name was purchased for $2,048. The respondent claimed that the domain name was acquired by it as a pattern of registering multiple domain names with the ‘So’ suffix. The respondent presents that it has also registered the domain names SoGreen.com, SoPure.com and SoMod.com.
The respondent presented that a conversation between the two parties over the domain name was initiated by the Complainant. However, an agreement over the price could not be established. In such a situation, the complainant filed a UDRP. This according to the respondent merited a RDNH.
The panel noted that the trademark filing and acceptance time succeeded the domain name registration. The panel inquired what trademarks could the respondent have infringed upon, if they were not even registered at the time of domain’s registration? The panel also found that although the respondent presented the complainant platform to sell the disputed domain name, there were other 14 entities as well. This in itself proves that the usage of the concerned mark was not exclusive.
Just possessing the trademark rights won’t suffice, the complainant also needs to prove how the respondent registered the domain name especially to target the complainant. The complaint was denied.
You can read the full case here.