The Freename Forum

A US financial services provider founded in 2017 with the trademark “EAGLE DATA” registered in its favor in 2024 started UDRP proceedings against the owner of the domain eagledata.com, which was registered in 2002. This went very wrong.

The US company Eagle Data Inc. believes that its trademark rights have been infringed by the domain eagledata.com, which is why it has initiated UDRP proceedings before the WIPO. Among other things, it claims to have obtained its trademark rights when it commenced its business activities in 2018; in addition, it has a trademark registration with the USPTO dated June 2024. It further states: “[t]he domain name is registered and used in bad faith since at least October 4, 2003, as the only purpose of it, is to be sold”. The opponent, “first last, eagle data inc”, did not respond to the case. The South African lawyer Jeremy Speres, who is known for his very quick decisions and did not disappoint in this case either, was appointed as the decision-maker.

Speres dismissed the complaint without further ado because the complainant had not proven the bad faith of the opponent and also found reverse domain name hijacking (RDNH) because the complainant had not observed references to the WIPO Overview 3.0 when preparing the complaint (WIPO Case No. D2024-3666). Speres was able to confirm the identity of the trademark and domain. He skipped the examination of the existence of a right or legitimate interest on the part of the opponent and dealt directly with the bad faith in the registration and use of the domain by the opponent. Since the complainant did not provide any details on the use of her trademark, he examined the circumstances under the provisions of §§ 10 and 12 of the UDRP, which entitle the Panel to conduct an independent investigation. It emerged that the complainant was already using its “EAGLE DATA” trademark in 2017 and had been doing so in the course of trade since 2018. It registered its domain eagledata.biz, under which it operates as a financial services provider, in 2017. The domain eagledata.com was already registered in 2002, whereby there is no indication that the ownership has ever changed since then, which means that - according to the complainant, who assumes registration in 2003 - it was registered by the opponent 15 years before the complainant's first use of the trademark. How the opponent could have registered the domain under these circumstances in bad faith and with the complainant in mind was not explained by the complainant and is extremely unlikely. Speres thus considered the third element of the UDRP, bad faith in the registration and use of the domain, not to be fulfilled.

He then examined an RDNH on his own initiative and listed the requirements for this recognized by other panels, all of which he also saw as fulfilled in this case. The complaint had been filed using WIPO's online form. If the complainant had read the WIPO Overview 3.0 before submitting the form in accordance with the information provided there, she would have recognized that the complaint had no chance of success and would have refrained from doing so. Furthermore, the complainant also used the “UDRP Model Complaint”, in which the following is written in red: “[N.B., registration in bad faith is generally considered to be possible only when the domain name registration occurs after your trademark rights accrue, please refer to section 3.8 of the WIPO Overview 3.0.” Speres found that the complainant was either aware of the nature of bad faith and chose to file the complaint anyway, knowing that it could not succeed. Or she filed the complaint frivolously without properly examining the documents on which she relied when filing the complaint. Both possible courses of action were reproachable. The complainant herself also argues that the domain was registered by the opponent at least as early as 2003, which means that she knew that the domain was registered long before she herself obtained trademark rights. Consequently, the complainant knew or must have known that the complaint would not be successful. This constituted an abuse of the dispute resolution procedure under the UDRP. Consequently, Speres dismissed the complaint and finds RDNH.

The UDRP decision on the domain eagledata.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-3666.pdf