The Freename Forum

The European Union Intellectual Property Office (EUIPO) saw its trademark rights infringed by the domain epta-agencies.com and initiated UDRP proceedings before the CAC. The proceedings went badly wrong, as there was not even an obvious confusion between the domain and the trademarks.

The EUIPO considers its common law trademark “EUIPO” and its international trademarks “EUIPO” applied for in mid-2023 to be infringed by the domain epta-agencies.com and, after prior correspondence with the domain owner, initiated UDRP proceedings before the Czech Arbitration Court (CAC). Among other things, it claimed to be a recognized body of the European Union and its only official body responsible for the registration and administration of various types of intellectual property rights, including trademarks. It has been acting in this capacity for over 30 years. The opponent registered the domain epta-agencies.com in September 2022 and is sending alleged invoices stating, among other things: “EPTA European Patent and Trademark Agency”, “Registration of Your Community Trade Mark” and “Data publication from EUIPO-European Union Intellectual Property Office”. The domain epta-agencies.com and the trademarks “EUIPO” are confusingly similar. The opponent had no right or legitimate interest in the domain, which he had registered and was using in bad faith. The complainant requested the “withdrawal” of the domain registration. The opponent, Henry Travis, did not appear in the proceedings. Neil Brown was appointed as the decision-maker.

Brown dismissed the complaint and found reverse domain name hijacking (RDNH) (CAC-UDRP-107041). Brown is already concerned about jurisdiction and the remedy sought by the complaint in advance, as the complainant never refers to UDRP proceedings in several letters to the opponent and then claims a remedy in the proceedings by “withdrawing” the registration, which the UDRP does not provide for. However, as his considerations had no practical effect, Brown entered into the substantive examination and caused the proceedings to fail at the very first element of the UDRP. Brown was already unable to establish any similarity between the domain epta-agencies.com and the trademarks “EUIPO”, as the latter do not contain the terms “epta” and “agency”. In addition, with regard to the alleged common law trademark “EUIPO”, the complainant only provides evidence that it exists at the time of the proceedings; evidence of its earlier existence, its use and its distinctiveness, in particular before domain registration in September 2022, has not been provided. The international trademarks “EUIPO” registered in mid-2023 - i.e. about one year after domain registration - were indeed provided by the complainant, but they were clearly not identical or similar to the domain. However, it is the complainant's responsibility to provide proof of this, which he has not done. Internet users would not be confused here. Brown therefore considered the first element of the UDRP not to be fulfilled, which is why the complainant could not win the proceedings.

Nevertheless, Brown still examined the requirements for bad faith because it was clear from the provisions of the UDRP and the available evidence that the complainant could not prove it. The UDRP expressly requires that the complainant must prove bad faith and that such bad faith must be caused by the existence of a mark to which it is directed. And if such a trademark did not exist at the time of the domain registration, the domain cannot have been registered with bad faith with regard to the trademark. However, the alleged invoices submitted and their contents also do not provide evidence of bad faith when the domain was registered. On the letter, the “EPTA European Patent and Trademark Agency” is stated as the sender; in the small print, which can be easily recognized and read, it is clear that the letter does not come from the “EUIPO-European Union Intellectual Property Office”. According to Brown, the complainant had not put forward a convincing case. He dismissed the complaint and decided that the domain would remain with the opponent.

Finally, Brown also examined reverse domain name hijacking (RDNH), which he confirmed. The complainant was the trademark owner and entitled to protect his trademark. It was also apparent that the alleged invoices of the opponent made the sender appear to be an official body for some recipients due to certain terminology. However, the alleged invoice submitted was dated long before the complainant became the trademark owner. He must also have been aware that, based on the evidence, the chances of winning the case were extremely slim to non-existent. This was already evident from the fact that the domain was registered long before the trademarks were registered and no evidence of a common law trademark was provided. There was no evidence of identity or similarity between the domain and the trademark. In view of all this, the complainant should not have filed the complaint at all. Brown affirmed an RDNH in the interest of maintaining the integrity of the UDRP and to ensure that the UDRP, when applied, is properly applied and supported by evidence.

The UDRP decision on the domain epta-agencies.com can be found at:
https://udrp.adr.eu/decisions/detail?id ... 92c8069491

A letter from the EPTA can be found at:
https://link.epo.org/web/warning_invoice_epta_en.pdf