Law firm didn’t show that it was likely the domain was registered to target its mark.
Many UDRP panelists will defer to complainants when the domain registrant doesn’t respond. But panelist Steven A. Maier used a bit of common sense to reject a law firm’s recent UDRP filing.
French law firm Arsene, which uses the domain name arsene-taxand.com, filed a dispute against arsen.online.
The domain is not in use, but is listed for sale on Sedo with a minimum offer of EUR 299.
Arsene argued this was a case of typosquatting against its name. It also noted that the registrant, a domain investor, has lost a couple of prior UDRPs.
The domain owner didn’t respond, but Maier took a step back and asked himself if it was likely that the domain was registered to target the law firm. He wrote (pdf):
While the Respondent has failed to reply to the Complaint, the Panel notes from the Decision in WIPO Case No. D2021-4185 (supra) that it appears to be a domain name investor and has in the past registered domain names having a dictionary meaning in the Polish language. In this case, whether or not the term “arsen” has such a meaning, the Panel takes notice of the fact that “Arsen” is a relatively common personal name in regions including Eastern Europe (and indeed that the name “Arsène” is a personal name in France, where the Complainant is located). To succeed under the second element, therefore, the Complainant must establish, on the balance of probabilities, that the Respondent registered the disputed domain name in order to target the Complainant’s trademark rights, and not for its value independent of that trademark, e.g. as a personal name.
The Panel does not find the Complainant to have established its case in this regard. First, notwithstanding its lack of a Response, it is credible that the Respondent registered the disputed domain name for a use specific to the term “arsen”, e.g. as a personal name, independently of the Complainant’s trademark. Secondly, the disputed domain name is not identical to the Complainant’s trademark and, moreover, the Complainant appears to be more readily associated in commerce with the “Arsene Taxand” name than with the ARSÈNE trademark alone. Thirdly, the Complainant provides no evidence that the Respondent registered the disputed domain name in order to target the Complainant’s trademark, e.g. by using it for a website or for emails designed to confuse the Complainant’s customers. Furthermore, the Panel finds the relatively modest minimum price of USD 299 requested for the disputed domain name to be more consistent with its intended use as, e.g. a personal name, than with a bad-faith attempt to coerce Complainant into buying the disputed domain name for an inflated price.
Indeed, arsen is registered in 93 top level domains. The domains are used by companies as diverse as a bespoke tailor, a cybersecurity company, a designer, and multiple people who appear to have the name Arsen. Arsen.xyz is used by a cleaning company in the domain registrant’s native Poland.
It seems highly unlikely that the domain was registered to target the law firm.
Leave a Comment