Thu 17. Oct 2024, 21:06
The Swiss company Polydec considered its trade mark rights to have been infringed by the domain polydec.com. After the German domain owner failed to respond to enquiries, Polydec started UDRP proceedings, which amounted to reverse domain name hijacking, but then came to a happy end.
The Swiss company Polydec SA believes that its rights have been infringed by the German company Knauf Information Services GmbH, which owns the domain polydec.com. It tried to contact the opponent, who does not use the domain, but never received a reply, which is why it initiated UDRP proceedings before the WIPO. She claims, among other things, that she has been the owner of a Swiss trade mark ‘POLYDEC’ since 2018. The opponent is no longer the owner of ‘POLYDEC’ trade marks, which expired in 2023, and no longer uses them. He therefore no longer has any reason to hold the domain, under which there has been no website for years. The domain was registered in 1998 and the opponent has been its owner since 2013. By continuing to hold the domain, he is damaging the business of Polydec SA. The opponent is also known for occupying domains such as fitterfriendly.com, alutop.com and insulationmanual.com. The opponent counters that it has been the owner of the disputed domain since it took over the original owner, the French Polidec Group, which was also the owner of various ‘POLYDEC’ trademarks that expired in 2023. There was no knowledge that the complainant had attempted to make contact regarding the domain; no corresponding correspondence had been found during a recent search. They do not hold any domains; Alutop is one of their well-known products. They were prepared to discuss the settlement of the matter and to set up a redirect to the complainant's offer under the domain polydec.com.
The British lawyer Adam Taylor, who was appointed as the decision-maker, rejected Polydec SA's complaint and even found reverse domain name hijacking (RDNH) (WIPO Case No. D2024-3456). There was no question that the trade mark and domain were identical. Taylor skipped the question of a right of the opponent or a legitimate interest on his part and immediately examined the bad faith registration and use of the domain polydec.com by the opponent. Taylor explained that he saw 31 July 1998, when the opponent's predecessor registered the domain, as the relevant date for a possible bad faith registration. It could be argued that 2013 was the relevant date when the opponent became the owner of the domain, but the transfer in 2013 did not constitute a material change of ownership because the opponent took over the entire group of companies that had owned the domain until that date. Apart from that, both dates were before the acquisition of trade mark rights on the part of the complainant, which did not arise until 2018. Even if the complainant had proven the creation of trade mark rights in the 1980s, as the statements on its website suggest, it would not have provided proof of bad faith domain registration on the part of the opponent. Accordingly, the complainant had not proven bad faith registration. And none of the arguments put forward against the opponent, such as that he does not use the domain and that he is no longer the owner of the corresponding trade marks, would change the lack of bad faith. Taylor found that the complainant had thus failed to fulfil the third element of the UDRP procedure and therefore dismissed the complaint.
He then examined RDNH and found that the complainant had abused the UDRP procedure. It conceded that the domain was registered as early as 1998. It did not claim a later significant registration date, even if it referred to the takeover of the group of companies by the opponent in 2013 as decisive. Either way, the complainant should have been aware that both dates preceded the application for her trade mark. It also knew that the domain had been legitimately registered and transferred in a completely different industrial sector than the one in which the complainant operates. It should have been clear to her or her legal representative that there was no prospect of proving the mandatory requirement that the domain had been registered in bad faith. In the complaint, she made no real attempt to prove bad faith registration; she limited herself to alleging bad faith use. Even here, the complaint relied on a series of hopeless allegations, mainly relating to the opponent's alleged (and indeed unproven) ‘refusal’ to comply with the complainant's request to transfer the domain to her. For these reasons, Taylor considered an RDNH to exist.
Taylor found clear words here, not only for the complainant, who was clearly fighting an almost hopeless battle. He attributed the first registration date of 1998 to the opponent, who only became the owner of the domain in 2013, and based this on the fact that the opponent had completely taken over the previous owner. However, Polydec SA's fight was not completely hopeless for the complainant, because not only does the domain polydec.com now redirect to its website polydec.ch, but the last change entered in the WHOIS on 9 October 2024 (one week after the UDRP decision of 2 October 2024) suggests that not only was the redirect set up, but the complainant was even transferred the domain.
The UDRP decision on the domain polydec.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-3456.pdf