The Freename Forum

Not all UDRP proceedings concerning .ai domains end in favor of the trademark owner filing the complaint. In the dispute over the domain dataparrot.ai, Data Parrot Holdings LLC lost to the domain holder because the latter was able to prove a legitimate interest in the domain and the case raised overly complex trademark law issues.

The US company Data Parrot Holdings LLC, owner of the domain dataparrot.io and the US trademark “DATA PARROT” registered in 2020, offers software as a service (SAAS) with software for copying relational data between production databases and test databases in the field of business software. It believes its trademark rights have been infringed by the domain dataparrot.ai registered in March 2023 and has initiated UDRP proceedings before the WIPO. It believes that the opponent knowingly and intentionally registered the domain in order to operate a competing service using the “DATA PARROT” trademark. The opponent, Christopher Hamoen from the USA, argues through his lawyers that the complainant is not using her trademark rights. He himself has legitimate rights to the disputed domain, as he offers a legitimate service with his AI-driven SaaS for the analysis of business data. He had chosen the domain in good faith. He denied that his and the complainant's services were related. The decision was made by a three-member panel consisting of the chairman, US attorney Martin Schwimmer, and the assessors, attorney and lecturer Evan D. Brown and attorney Gary Saposnik.

The three-member panel dismissed the complaint because the opponent was able to prove a legitimate interest and the trademark law issues were ultimately too complex for UDRP proceedings (WIPO Case No. DAI2024-0072). The panel quickly established the similarity of the trademark and domain and considered the first element of the UDRP to be fulfilled in favor of the complainant. The question of a right or legitimate interest of the opponent in the domain dataparrot.ai became more difficult. According to the panel, the opponent had already used the domain dataparrot.ai or a name corresponding to the domain in connection with an actual service offer prior to the notification of the dispute or had at least demonstrably made preparations to use this name. He had proven that he registered or applied for the domain at the same time as his own trademark “DATA PARROT” on March 20, 2023. Only then did he receive the complainant's warning letter of July 14, 2023. In addition, the complainant itself had provided an example of unsolicited press coverage of the opponent's company when it received a grant from a development agency. It is precisely this press coverage that speaks for a proper business operated by the opponent. However, this did not prove a legitimate use of the domain and the opponent's offer must also be legal. The opponent may not intentionally infringe the complainant's trademark rights. The complainant had not provided any proof of this. She had not proven that the opponent had any knowledge of her trademark. Although she claimed that the opponent had probably known about her trademark rights by searching the WHOIS and/or trademark databases, she did not provide any proof of this. The affidavit submitted by the opponent, according to which he did not know about the complainant and her trademark when he registered the domain and applied for his trademark, and his assertion that he considered the use of the complainant's trademark to be minor, were of questionable truthfulness. However, the complainant had not shown that significant sales, advertising or media coverage had led to a sufficient reputation to convince the Panel that the opponent not only knew (or should have known) of the complainant's existence, but was also motivated to exploit that reputation.

The complainant further argued that, given the identity of the parties' trademarks, the alleged relationship of the parties' goods and services and the instances of alleged actual confusion, the use of the disputed domain by the opponent constituted an infringement. However, the Panel considered the legal issues to be too complex at this point, because regardless of whether the Complainant's allegations were true or not, the assessment of the Complainant's claim would require findings to be made on, inter alia, the strength of its mark and the channels of trade of the parties' respective services. This is not covered by the UDRP and goes beyond questions of cybersquatting. Therefore, the matter would be better dealt with before a civil court.

The panel noted that the opponent had submitted evidence of the demonstrable preparation and use of the disputed domain even before being informed of this dispute by the complainant. As a result, the evidence for the existence of the second element of the UDRP was not provided by the complainant. The panel refrained from examining bad faith, as this was not necessary under the given circumstances. The three-member panel thus dismissed the appeal, not without pointing out that it was not taking a position on the merits of a broader dispute between the parties. The complainant was at liberty to assert claims before other forums. The three-member panel also pointed out that the present finding was limited to the UDRP and was not intended to influence any subsequent proceedings, should these be brought.

The UDRP decision on the domain dataparrot.ai can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-0072.pdf