The Freename Forum

We keep an eye on the developments of UDRP disputes at .ai. Two recent WIPO decisions make it clear how important forward-looking domain registration is in many areas in order to protect your own brand.

datamotion.ai (WIPO Case No. DAI2024-0035)

In the dispute over the domain datamotion.ai, DataMotion Inc. and Emi Roberti, Data Motion from Great Britain faced each other. The complainant, DataMotion Inc., a US company, operates a platform on which it offers secure, intelligent solutions for data exchange. It claims to have been offering services at datamotion.com since 1995. It is also present in Europe through business relationships with large companies. It has also been the owner of a US trademark "DATAMOTION" since 2011. The domain datamotion.ai was registered in October 2023 and is linked to a website offering software development services related to security video cameras and management services alongside customised SaaS solutions. The complainant has made multiple complaints of trade mark infringement to various service providers associated with the domain and its offering. This also led to a temporary blocking of the offer. Attempts to make contact via contact points on the website at datamotion.ai were unsuccessful, which is why the complainant applied to the WIPO for UDRP proceedings. The opposing party referred to a UK trade mark "DATAMOTION" registered in 2017 by a company that has nothing to do with either party. The decision-maker was the Australian lawyer and lecturer Warwick A. Rothnie was appointed as the judge.

Rothnie dismissed the complaint because, in his view, it was actually a trade mark dispute regarding trade mark priority and not the domain (WIPO Case No. DAI2024-0035). He confirmed the similarity of the domain and the trade mark. However, he saw an entitlement of the opponent to the domain. The name of the opposing company founded in 2023 corresponds to the domain name, which in itself is not sufficient to assume a legitimate interest. However, it offers some services, such as the management of security cameras, which, at least at first glance, do not conflict with the complainant's data services. Furthermore, the UK trade mark of a third party shows that the complainant does not have an exclusive right to use the term "Data Motion". This was more of a trade mark dispute about the priority of trade marks than a kind of cybersquatting, said Rothnie, who considered that the second element of the UDRP had not been met by the complainant and dismissed the complaint.

The UDRP decision on the domain datamotion.ai can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-0035.pdf

sennheiser.ai (WIPO Case No. DAI2024-0040)

Sennheiser electronic GmbH & Co. KG had a lucky hand in the UDRP proceedings before WIPO. It saw its trade mark rights infringed by the domain sennheiser.ai, which was registered in April 2023 and redirects to a sales page where you can enquire about the price of the domain. The complainant thus learnt that the domain sennheiser.ai was being offered at a price of EUR 139,689.34. The law firm commissioned by Sennheiser made extensive submissions and requested the transfer of the domain sennheiser.ai. The opponent, who used a privacy service, did not respond to the matter.

The Dutch lawyer Richard C.K. van Oerle ruled on the complaint and confirmed Sennheiser's transfer claim (WIPO Case No. DAI2024-0040). The similarity of the trade mark and domain was obvious. Oerle considered the prima facie evidence that the opponent had no rights and no legitimate interest to be fulfilled. He took a differentiated view of the question of registration and use in bad faith. In line with the complainant's submission, Oerle confirmed that the opponent knew or should have known of her globally recognised trademark when he registered the domain. Due to the ending .ai, which is interpreted as an abbreviation for "Artificial Intelligence", the public could get the impression that the domain sennheiser.ai serves to identify the complainant and its AI technologies. This suggests that the opponent is targeting the complainant with the domain. Accordingly, there is a registration in bad faith. With regard to the use of the domain in bad faith, the highly distinctive character of the trade mark "Sennheiser" speaks against the opponent. He could have explained his intentions, but preferred to remain silent. He had also used a privacy service to make his identification more difficult. It was highly unlikely that the opponent would be able to use the domain sennheiser.ai for any legal purposes. Rather, it looked as if he had registered the domain in order to sell it at a very high price. And this is confirmed by the complainant's price enquiry, which shows that the domain is being offered for EUR 139,689.34. As a result, Oerle also saw bad faith use confirmed and all requirements of the UDRP fulfilled, so he decided to transfer the domain.

Even if the two proceedings have different outcomes, one thing is clear: the trade mark owners became aware of the .ai ending too late in each case. This is particularly true because both domains were only registered in 2023. At that time, AI was already on everyone's lips. And .ai had already been used as an AI domain a few years earlier and registered by domain investors as well as cybersquatters. With a better domain strategy or a team that takes care of such developments and registers relevant domains in good time, such UDRP procedures can be avoided.

The UDRP decision on the domain sennheiser.ai can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-0040.pdf