Multiple Successes for Talal Abu Ghazaleh Legal (TAGLegal) in UDRP Complaints
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    17-Jan-2018

  • Multiple Successes for Talal Abu Ghazaleh Legal (TAGLegal) in UDRP Complaints
  • Source : Multiple Successes for Talal Abu Ghazaleh Legal (TAGLegal) in UDRP Complaints

 

By  Youmna Al-Fuly 
TAG-Legal Egypt Office
Talal Abu-Ghazaleh Legal (TAG-Legal)
Disclaimer: The following Article is intended for general information purposes only.

The Uniform Domain Name Dispute Resolution Process was adopted by ICANN in 1999 based on recommendations made by WIPO in the First WIPO Internet Domain Name Process. 
The UDRP is limited to clear cases of bad-faith, abusive registration and use of domain names and has proven highly popular among trademark owners.
One of the main purposes of the UDRP is to provide a quick, cheap, and straight forward to adjudicate domain name disputes between trademark holders and bad faith registrants of domain names. 
Complaints are filed with the Dispute Resolution service providers accredited by the ICANN (i.e. WIPO, ACDR, FORUM… etc.). The Complainant, who should be the trademark owner, is required to provide evidence of the ownership of the trademark. The Respondent, who is the registrant of the domain name, has to prove a legitimate interest for using the domain name.
The Complainant at the time of filing has the choice of the remedy between three possible remedies, which are Cancellation, transferal or sustaining (in case the complaint is denied) of the domain name. 
In order to be successful under the UDRP, the following are the cumulative conditions that must be proven by the complainant, or otherwise the complaint will be denied:

(i)The  domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

To satisfy the first requirement of the UDRP, the complainant must prove that it has acquired rights, including trademark rights, over the disputed name or part of the name that constitute the litigious domain name. 
In “Edg0.com” complaint, TAGLegal team based their claims on the fact that the complainant has been in business since 1956 and holder of the domain name registered with the company’s abbreviation, since 1998. The disputed domain name that was registered using the trademark name entirely, with the last letter “O” being replaced with the number “0”, which is not sufficiently distinguished.

In this regard, the panel has ordered in its decision the transferal of the disputed domain name “edg0.com” to the complainant. 

(ii) The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

This element, which lists several (non-exclusive) examples of registrant rights or legitimate interests, including using the domain name in connection with a bona fide offering of goods or services, the registrant being commonly known by the disputed domain name, and legitimate non-commercial or fair use.
Hence, where a Complainant makes an initial prima facie case that, the Respondent lacks rights or legitimate interests in a disputed domain name; the burden of proof on this element shift to the Respondent.

In relation to City CENTRE ME’AISEM, the complainant has filed a complaint against the disputed domain name using the complainant’s trademark as well as company name as it appears in the company’s Commercial Register.
In addition, the respondent is not affiliated with the complainant in anyway, the website containing the disputed domain name creates an impression that it relates to the trademark “CITY CENTRE ME’AISEM” which means that he has no rights or legitimate interests in respect of the disputed domain name

Based on the foregoing and the other principles, the Panel ruled the transferal of the disputed domain name to the complainant. 


(iii) The domain name has been registered and is being used in bad faith.

Bad faith, is often the easiest to satisfy and can usually be demonstrated with the content of the website which may show that it is merely a “parking domain” for instance, or any other lucrative domain. 
Often, companies or individuals who have no legitimate interest in the domain name purposely use trademarks that are not yet registered domains, and seek monetary value from the trademark owners. 
In the light of the above, TAGLegal Egypt have succeeded in many cases in this regard, such as; “Zalatimo Brothers for Sweets” concerning the disputed domain name

It was a clear infringement as the domain name is identical to the complainant trademark, on the basis that the only letter differentiating the main element of the disputed domain name was an additional “h” to the complainant registered trademark and domain name “Zalatimo.com” since June 1998.
In this regard, the Panel ordered the transferal of the disputed domain name to the complainant. 

Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favored route to resolution of these disputes tends to be the Alternative Dispute Resolution policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP).

For further details, please contact TAG-Legal Egypt Office at: Egypt@tag-legal.com 

 
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