The Freename Forum

Two US companies operating in the same product market are in dispute over the domains theurinators.com and urinator.net. As the two have been competing for years, the WIPO panel found it too delicate to resolve the differences in a simple UDRP procedure. It dismissed the complaint.

Innovative Research Technology Inc. believes that its rights to its ‘URINATOR’ trade mark have been infringed by the domains theurinators.com and urinator.net and has initiated UDRP proceedings before WIPO. It claims to be the owner of the US trade mark ‘URINATOR’, registered in October 2013, for an ‘anti-genetic profile testing device’, a device for the temperature-controlled storage of artificial urine. The domains theurinators.com and urinator.net are confusingly similar to the trade mark. The opponent was not entitled to use the trade mark, he had registered the domains in bad faith and was using them in bad faith. The opponent, ‘Christopher Swain and Robert Grimm, 513 Ventures, LLC’, did not comment on the matter. Attorney and lecturer Evan D. Brown was appointed as the decision-maker.

Brown already dismissed the complaint during the preliminary examination, as it was not suitable for proceedings under the UDRP, which is intended for simple cybersquatting cases (WIPO Case No. D2024-2861), due to its complexity with regard to trade mark law issues. Brown took the liberty of exercising his right to conduct his own research, using archive.org, among others. He found that the other party sells devices like the complainant. The domain urinator.net has been registered since October 2006 and it appears that the opponent has been selling these devices via it since October 2012 at the latest. Theurinators.com has been registered since June 2019. Brown declined to examine the UDRP procedure, citing general case law. When a dispute involves potential trademark infringement that raises complex issues beyond clear cybersquatting, such matters are usually better resolved in civil court proceedings than under the UDRP. Brown believes that this dispute touches on issues of trade mark infringement, unfair competition and perhaps other intellectual property issues. For example, the opponent has been using the urinator.net domain for its business for at least 12 years. Principles of equity, including the statute of limitations (laches), could apply here. Furthermore, despite its registration in the US trade mark register, the trade mark ‘URINATOR’ also corresponds - to a certain extent - to a dictionary term associated with the goods offered. And because both parties have long operated side-by-side in the marketplace, a court may need to evaluate the presence or absence of actual consumer confusion in the marketplace as a relevant factor in determining the parties' respective rights. A fair resolution of this case would require a greater weighing of the evidence and a more comprehensive analysis than is possible in a UDRP proceeding. Consequently, the appeal failed. Brown took no position on the law, emphasising that its finding related only to the UDRP proceedings and was not intended to affect any subsequent proceedings, should they be brought.

This short and concise decision once again makes it clear that a supposedly simple case harbours complex depths and cannot be decided without effort. What is a little irritating here is the fact that both parties were represented by law firms, but the other side nevertheless refrained from taking a position on the matter.

The UDRP decision on the domains theurinators.com and urinator.net can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-2861.pdf