WIPO Decision Highlights Importance of Maintaining Domain Name Registration - Carters Professional Corporation - Barristers, Solicitors and Trade-Mark Agents

WIPO Decision Highlights Importance of Maintaining Domain Name Registration
June 2020 Charity & NFP Law Update
Published on June 25, 2020

By Sepal Boni

The World Intellectual Property Organization Arbitration and Mediation Centre released a decision under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) on April 16, 2020, concerning the transfer of a disputed domain name. The domain name, berrysweet.com, had been previously owned by Berry Fresh LLC (“Berry Fresh”) who, in addition, also owned a trademark registration for BERRY SWEET in Canada and the US. The issue arose when Berry Fresh inadvertently allowed the domain name registration to lapse through a billing miscommunication. Subsequently, a third party purchased the domain name after Berry Fresh’s registration had expired.

In an attempt to recover the domain name, Berry Fresh filed a complaint under the UDRP. In order to prevail in a domain name dispute under the UDRP, the complainant must satisfy the following three requirements:

the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
the domain name owner has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.

In its complaint, Berry Fresh argued that it had rights to the mark BERRY SWEET by virtue of its trademark registration and its commercial use of the mark since 2007. It further claimed that the domain name was identical to its BERRY SWEET trademark registration and that the new owner of the domain name had no rights or legitimate interests in the disputed domain name. It also argued that the new owner registered the domain name in bad faith and had not used the domain name for an active website, instead demanding a seven-figure amount for the disputed domain name.

The administrative panel found that Berry Fresh owned a trademark registration for BERRY SWEET and had established use of the mark for the sale of blackberries, pursuant to the UDRP. Further, it established that the disputed domain name was identical to or confusingly similar with its mark. However, in accordance with the UDRP Berry Fresh was also required to establish that the domain name was registered and used in bad faith by the new owner. On this point, the administrative panel found insufficient evidence that the new domain name owner had registered the domain name to take advantage of Berry Fresh or its rights in the BERRY SWEET mark. As such, Berry Fresh’s complaint failed, and it was unable to recover the domain name from the new owner.

This case is an important reminder to charities and NFPs of the importance in actively registering and renewing domain name registrations, and ensuring that renewal deadlines do not inadvertently lapse. Charities and NFPs should register as many relevant domain names as possible in order to prevent them from being registered by third parties. Even where the domain name is identical to an existing registered trademark owned by the charity or NFP, it is difficult to regain possession of the domain name once it has been registered by a third party.

Read the June 2020 Charity & NFP Law Update