The Freename Forum

After discussing a very successful UDRP procedure of a German company last week, we briefly show two German companies that recently failed in UDRP proceedings.

hydacservice.com - (WIPO Case No. D2024-4947)
HYDAC Technology GmbH, founded in 1963, brought UDRP proceedings before WIPO against the Indian company Digital Motive Inc (Rabbani Hussain) for the domain hydacservice.com. The complainant is the owner of the trademark “HYDAC”, which was registered with the Indian Trademark Office in 1989. The opponent, a company based in the Indian city of Hyderabad, registered the domain hydacservice.com in March 2022 and offers similar services to the complainant. In an unofficial email, it claimed, among other things, that the domain name is composed of “HYD”, the abbreviation for Hyderabad, and “AC”, the abbreviation for “air conditioning”. Accordingly, it exclusively offers services for the repair of air conditioning systems. The complainant's trademark was not known to her. However, it was quite prepared to sell the domain to the complainant at market value in order to compensate for its expenses.

The Greek lawyer Marina Perraki was appointed as a panelist and dismissed the complaint (WIPO Case No. D2024-4947). She confirmed the similarity of the trademark and domain. However, the proceedings failed for the complainant because the opponent presented its rights and legitimate interests in a comprehensible and credible manner by explaining the choice of domain and showing that it operates a proper business under the domain. This presentation also applied to the question of bad faith registration and use of the domain hydacservice.com. There was nothing to suggest that she was targeting the complainant in order to profit from her trademark or name. The explanation that she had registered and was using the domain for her air conditioning repair services in Hyderabad convinced Perraki. The fact that she agreed to sell the domain to the complainant at a fair market price during the proceedings also did not speak against her in light of the opponent's explanation for choosing the domain. Perraki rejected the complaint.

gopa.com - (WIPO Case No. D2024-5008)
The German company GOPA Gesellschaft für Organisation, Planung und Ausbildung mbH, founded in 1965, filed a complaint against its US owner Tony Peppler, StartupCapital.com, over the domain gopa.com. In the UDRP proceedings before WIPO, the complainant argued that it had been the owner of various “GOPA” trademarks since 2009. However, it had already registered the domain gopa.de in January 2000 and offered its services under the “service mark” GOPA from 2001. In April 2006 it registered the domains gopa.eu and gopa-group.eu and in July 2006 the domain gopa-group.com, while the domain gopa.com was only registered by the opponent in 2007 and is now being offered for the minimum price of US$ 25,000. The opponent countered that “Gopa” is a popular surname and first name, especially in India, that it is also a religious term and that “Gopa” is also often used as an acronym. There are also numerous third-party trademarks “GOPA” and domain registrations under various top level domains used by different companies. He had bought the domain in 2007 for US$ 6,200 as part of a DropCatch auction and had never used it since then to capitalize on the trademark or the name of the complainant.

A three-member panel ruled on the complaint, dismissed it, but also found no reverse domain name hijacking (RDNH) (WIPO Case No. D2024-5008). The identity between the domain and the complainant's registered trademarks was still confirmed by the panel. However, it did not confirm a “service mark” on the part of the complainant since 2001: The multiple use of the term “Gopa” as a name, trademark and acronym spoke against this. In this case, there was a lack of submission and corresponding evidence that the complainant's trademark had acquired distinctive character. Furthermore, the panel recognized that the opponent, as the domain investor, was entitled to use the domain. In addition, he had acquired it in 2007, whereas the complainant could only show registered trademarks from 2008. For these reasons, the panel also found no evidence of bad faith on the part of the opponent. In addition, the panel also examined a possible RDNH on the part of the complainant, which it did not see confirmed: The complainant actually knew that it did not have any trademarks at the time of the domain acquisition by the opponent, which meant that it was hardly possible to establish a bad faith registration. It refers to its “service mark”, which has been in use since 2001. The Panel considered that when the Complainant realized that the registered domain gopa.com contained its trademark and was being offered for sale, it probably wanted to defend and protect the trademark it had already registered at that time. In these circumstances, it was not entirely unreasonable for her to assume that the domain owner had registered the domain with the intention of selling it to her. Taking all of this together, the Complainant may have been somewhat overoptimistic in bringing the UDRP proceedings; but that does not mean that it was acting in bad faith or was bullying or seeking to bully the opponent. In light of this, the panel ruled out an RDNH but dismissed the appeal.

The UDRP decision on the domain hydacservice.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-4947.pdf

The UDRP decision on the domain gopa.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-5008.pdf