Complainants need to understand the purpose of UDRP.
Another company has mistaken what the Uniform Domain Name Dispute Resolution Policy (UDRP) can be used for. It’s designed to quickly resolve clear-cut cases of cybersquatting, not trademark disputes.
TomoCredit, Inc. filed the case against tomo.com, which is owned by Tomo Networks, Inc.
The Complainant is a credit score company, while the Respondent uses tomo.com to promote its mortgage services.
While there may be some overlap in what the companies do that could create a trademark issue, it’s not likely that the Respondent created its business as a ruse to cybersquat on the Complainant’s trademark.
On the issue of rights or legitimate interests, the three-person World Intellectual Property Organization panel wrote (pdf):
On August 4, 2022, Complainant sent a cease-and-desist letter to Respondent. There is no evidence that Complainant was well known before this date or any evidence that Respondent had actual knowledge of Complainant before it receiving this letter.
Respondent had been using TOMO for more than two years before it received Complainant’s letter in August 2022. Respondent incorporated in Delaware as “Tomo Networks, Inc.” in May 2020; secured United States Trademark Registration No. 6,647,787 (Registered February 15, 2022); began using tomonetworks.com on October 30, 2020; and began using hellotomo.com on June 30, 2021. Respondent conducted substantial business under these domain names – both of which correspond to the Disputed Domain Name – before receiving Complainant’s cease-and-desist letter.
On the issue of registration and use in bad faith, the panel wrote:
Although Respondent had actual notice of Complainant’s claim of trademark rights before it purchased the Disputed Domain Name in September 2023, the evidence demonstrates that Respondent’s interest in the Disputed Domain Name began long before. In September and November of 2020 Respondent paid two different investigators for assistance contacting the prior owner of the Disputed Domain Name, a Japanese entity. This evidence, in combination with evidence that Respondent conducted substantial business under names that include “Tomo” prior to any knowledge of the dispute or Complainant’s alleged prior rights, persuades the Panel that Respondent was not targeting Complainant’s good will when it registered the Disputed Domain Name.
The panel did not consider reverse domain name hijacking.
Friedland Cianfrani LLP represented the Complainant, and Pillsbury Winthrop Shaw Pittman LLP represented the Respondent.
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