UDRP Local Experience: Bank Sohar/Oman Air

While we are still on the topic of the UDRP, I thought I’ll share with you an example of a local experience with the UDRP, and will show you an example of a classic case where the UDRP could be used.

BankSohar.com

Some of you might remember that when Bank Sohar launched its website it was hosted at a .net TLD and not the current .com TLD. This was obviously because someone registered the domain name before they did.

Late in 2008, Bank Sohar initiated a UDRP action against the website owner. Under the UDRP a domain name will be transferred to a TM owner if

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
In the action handled by AlBusaidi, Mansoor Jamal & Co (which was then Al Alawi, Mansoor Jamal & Co) the complaint claims and arguments consisted of the following:

A. Complainant makes the following assertions:

1.Respondent’s <banksohar.com> domain name is identical to Complainant’s BANK SOHAR mark.
2.Respondent does not have any rights or legitimate interests in the <banksohar.com> domain name.
3Respondent registered and used the domain name in bad faith.

The domain name registrant did not respond to UDRP process, yet the panel decided in his favour, because the domain name was registered before the trademark of Bank Sohar was registered. The complaint was denied. But it seems that the Bank Sohar later settled (they paid them) with the domain name registrant to get the domain name which it currently uses.

Though not a clear cut case, because the domain name was registered before the trademark was registered, it is apparent that the complaint was not defended well (I mean, out of the 15 page limit they had, Bank Sohar submitted three lines?!).

First of all, under WIPO UDRP decisions for the purposes of answering element 1, there is no requirement for the trademark to be registered before the domain name for similarity to be established, the registration day is a factor to be considered in the third element. Bank Sohar would have easily satisfied that element by citing this decision Digital Vision, Ltd. v. Advanced Chemill Systems:

“The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i)”.

For the second element, Bank Sohar was required to establish that the registrant did not have any legitimate interests in the domain name, this is established by stating that the registrant does use the domain name in a bona fide business and that the registrant is not known by that name, both of which are easy to establish, he is obviously not known by the name Bank Sohar nor does he use it in a business context.

The third element is the hardest to establish, because Bank Sohar had to establish that the registrant registered the domain name and is using it in bad faith. The problem here is that Bank Sohar registered its trademark and started its business after the domain name was registered, however, in cases where the the registrant knew of the existence of the complainant and it was clear that he registered to take advantage of the domain name later, then bad faith can be established. This was the bases by which a transfer took place in cases such as ExecuJet Holdings Ltd. v. Air Alpha America, Inc. I don’t think that it is hard to establish that many people knew about the Bank Sohar a year before it started doing actual business!

Bank Sohar lost this procedure because it did not argue its right at all. The choice of UDRP provider was also bad as WIPO clearly holds the cases I cited above as the majority view and it have been more likely for Bank Sohar to win this if WIPO was used as a provider instead of the National Arbitration Forum. No idea how much they had to pay for the domain name afterwards!!

You can read the decision text here.

OmanAir.com

Unlike the Bank Sohar case, the second part of this post is not about a case that happened, but about a cybersquatting example which can be easily won through the UDRP.

Again, some of you might remember when Oman Air used to have a website at the .aero TLD, it currently uses the oman-air.com TLD as its web address as well nowadays. The most desirable TLD though, omanair.com, is registered by a Sri Lankan since 2002. The domain is parked.

This is a classic UDRP case at which it is guaranteed that Oman Air can gets its domain back. If Oman Air wants to get the domain it has to establish in a UDRP procedure the following:

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

In regard to the first element, the trademark is identical to the trademark owned by Oman Air, the location of the service and place of registration is irrelevant (case Guinness.com), if Oman Air did not have a registered trademark at that time it can establish that it had a common law trademark as Oman Air was commonly known by that name by 2002 (case: IdeaLeage.com).

In regard to the second element, it can be easily established as the registrant is not known by that name, not does not carry out any bona fide business using that domain name.

In regard to the third element, it is clear that the registrant registered the domain name to profit from the Oman Air’s trade mark, lack of usage has been considered an indication of bad faith (recent case example).

All in all, this case is a classic UDRP example which Oman Air can easily win if it uses the procedure.

Oman Air would be stupid to let somebody else take control of their domain name, the costs for using the UDRP are nominal (WIPO it costs $1500 while at NAF its $1300), and there is not to do it!

Other interesting decisions from the region include aljazeera.com and ebay.ae.

Trade Marks – Introduction

 
(Photo credits: Pattista)

Trade marks (spelt trademarks in the US) are the most visible form of intellectual property to regular consumers on daily basis. They are argued to be the oldest form of intellectual property known to man as it was used from the oldest of ages by people to identify the source of goods.

The functions of Trade mark is considered to include:

  1. A method for identifying the source of a good or service.
  2. A method to distinguish the goods of a merchant from those of others.
  3. A guarantee of quality (good and bad quality).
  4. And a branding/advertising medium

Trade marks differ from other intellectual property in that they primarily protect a consumer interested (not to have consumers misled by products using the trade marks of others) as well as the interests of businesses (the right to distinguish one’s goods from those of others). Almost all other intellectual property subjects are concerned about protecting the creative and inventive products of businesses and are not concerned with the interests of consumers. This makes trade mark law the least controversial intellectual property as it has the society benefits to all parties almost adequetly balanced.

Generally speaking, a trade mark is a sign registered by a business in a country to have the exclusive right to use that sign in a specific business type or industry. A trade mark must be registered in each jurisdiction to acquire protection in that specific area. The protection of a trade mark can be renewed forever as long as this trade mark remains distinctive and is used by the business. (Unlike patents which can only last for a maximum of years and unlike copyright which does not require registration but is also protected for a limited time period only).Once someone registers a trade mark, he will be able to stop others from using a similar mark on similar goods or service for which he regsitered the mark as long as he can prove that others will confuse the source of the goods to which the infringing sign was attached. 

Certain powerful trade marks can also be protected against the use of goods and services which are not similar if they can establish that this will dilute their trade mark. Certain jurisdictions also grant trade marks the right not to be tarnished.

Trade mark law is very much related to unfair competition law in many jurisdiction because taking an advantage someone else’s goodwill can be considered as an unfair competition practice. It is also directly related to the law of passing off in common law jurisdictions which grants protection to unregistered marks as well as the goodwill of a business.

I have already made a post about the issue of trade marks and domain names. I will talk in future posts about the technical differences between trade mark law in the US, Japan, and Europe.