Panelist lets company shoehorn a trademark dispute into UDRP.
It’s not often that I thoroughly disagree with a UDRP decision, but I take issue with a recent FORUM (National Arbitration Forum) decision for mento.ai.
Mento Technologies Inc., which uses the domain name mento.co, filed the dispute against a startup.
Mento.co offers a coaching program that provides users with access to mentors and coaches to advance their careers.
Mento.ai is a new social media platform that is “a vibrant social network powered by AI to supercharge your professional journey. Set goals, find mentors, and engage with a community that’s as ambitious as you are,” according to its site.
Mento.co launched well before mento.ai. It certainly appears that there is a trademark issue here. But it does not appear to be cybersquatting, despite panelist Clive Elliott K.C.’s ruling that the domain should be transferred.
Consider the factors necessary to show bad faith in a UDRP:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It’s definitely not i or ii.
Looking at iii and iv, the Respondent’s actions do not suggest either of these is the case. It suggests it’s a bona fide startup that chose its name poorly.
There is nothing about its site that suggests it was trying to pass off as the Complainant; the sites, color schemes, etc., are completely different.
It also certainly seems that the Respondent has a right or legitimate interest in the domain. The UDRP states how this can be shown:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
Upon a quick review of the Respondent’s LinkedIn page, it’s clear that they have invested time in developing their business. It’s a new business, but it is not some elaborate front to cybersquat on the Complainant’s brand.
The Respondent, who was not represented by counsel, stated that it initiated a rebranding process as soon as it received the UDRP. It planned to launch the rebrand in July.
Instead, its timeline was moved up by this decision. On the date of the decision, the company announced a rebrand to Gigily, using gigily.ai.
The Complainant shoe-horned a trademark dispute into UDRP. That’s not what UDRP is for, even if the domain registrant should have done more trademark due diligence.
I believe Elliott should have dismissed the case. The likely outcome of a dismissal is that the two parties would have agreed that the Respondent would transition its brand in a certain time frame and then transfer the domain. If not, the Complainant could sue the Respondent for trademark infringement.
That’s what should have happened.
Hi Andrew,
I agree with you that this dispute does not properly fall within the scope of the UDRP for, as you said, it is a trademark dispute not a cybersquatting dispute.
I’ll quibble with you about one line in the post-
“Consider the factors necessary to show bad faith in a UDRP:”
Yet there are no factors necessary to show bad faith in a UDRP.
The four factors, or circumstances, listed in the Policy are examples only “without limitation”:
“the following circumstances, in particular but without limitation”.
In other words, the Policy does not make clear what circumstances demonstrate bad faith. Neither the Respondent nor the Complainant knows what are the circumstances which demonstrate bad faith, because that is at the discretion of the Panel. The UDRP is drafted in the style of an actual policy with clear guidelines but its substance is: “bad faith is whatever the Panel says it is”.
That is very poor policy drafting, invests way too much discretion with the Panel, and provide no clarity or certainty as to what is bad faith under the Policy.
Here the Panel claims that the circumstances fall under 4(b)(iii)-
“The Panel finds that the offer of services that compete or potentially compete with those offered by Complainant, in this way and as set out above, shows bad faith disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii)”.
As you say, the evidence indicates that the circumstances are not those described in 4(b)(iii) of intentionally competing with the Complainant.
But that doesn’t really matter, for under the Policy, whatever a Panel says is bad faith, is bad faith, regardless of the evidence.
Thanks for your insight Nat, as always.