UDRP: Cloudy outcome despite identical trademark

The Complainant was Clever Cloud SAS, of France, a company established in 2010 and operating in IT solutions under the name “Clever Cloud”.  It was the owner of a French trademark in CLEVER CLOUD registered in 2010 and continuously used since then.

The Respondent was Dr.-Ing. Benjamin Poppinga, an individual based in Germany.  No further information was provided.

The disputed Domain Name was clever.cloud, registered on 16 February 2016.  It was resolving to a blank page.

As a preliminary issue the panel had to determine the language of the proceedings.  Pursuant to paragraph 11 of the UDRP Rules, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise or the panel determines otherwise. 

In the present case, the registration agreement was in German, but the Complainant requested English as the language of the proceedings on the basis that the Respondent’s personal website was available in English and the pre-complaint correspondence between the Parties was also in English.  However the Respondent requested German.  It was therefore for the Panel to determine the language of the proceedings.  The Panel was of the view that it would not be prejudicial for the Respondent if English was adopted, and substantial additional expense and delay would likely be incurred if the Complaint had to be translated into German.  Therefore, the Panel decided that the language of the proceedings was English.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i)         the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trademark CLEVER CLOUD and that the Domain Name incorporated the Complainant’s trademark in its entirety.

As stated in section 1.11.3 of the WIPO Overview 3.0:

“Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name  trade.mark   would be confusingly similar for UDRP standing purposes).”

In the case at hand, the Panel noted that second-level of the Domain Name, “clever”, in combination with the TLD “.cloud”, contained the Complainant’s CLEVER CLOUD trademark in its entirety.  The Panel therefore found that the Domain Name was identical to the Complainant's trademark.  Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview 3.0, a complainant must prove that the respondent had no rights or legitimate interests in respect of the domain name in question.  A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise.  If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.

In the present case, the Complainant put forward a prima facie case to the effect that the Respondent had no rights or legitimate interests in respect of the Domain Name as he had never made any use of the Domain Name nor registered any trademark directly or indirectly related to the Domain Name.  The Complainant further claimed that the Respondent’s only interest in the Domain Name was to sell it at the highest possible price.

The Respondent argued that he started to work on a project, named the “Clever Cloud-Project”, in 2015 for the purpose of fabricating and distributing a colouring book.  The Respondent conducted a trademark search at that time, which drew his attention to the Complainant’s CLEVER CLOUD trademark, but he concluded that the Complainant’s trademark did not collide with his colouring book project.  The Respondent further claimed that the Complainant’s CLEVER CLOUD trademark was a French trademark whereas his colouring book was initially to be published in German-speaking countries only.  In addition, the Respondent contended that the Domain Name had already been used in connection with his colouring book project in the form of a planned book with the title “Clever Cloud”, explaining that there was a reference to the Domain Name in the book including the associated email address “[email protected]” on the spine and in the imprint, for example for feedback regarding the book.  The Respondent added that his book would be published in 2021 and he planned to offer supporting material, such as additional colouring pictures and merchandise articles, on the website associated with the Domain Name.  In support of his contention, the Respondent submitted evidence, such as a business plan and pictures of the colouring book, to prove his legitimate interests in the Domain Name.

In the Panel’s view, given the above, on balance the Respondent had provided sufficient evidence that he had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Regarding the Respondent’s alleged interest only in selling the Domain Name, the Panel found the Complainant’s arguments unconvincing because the Respondent only rarely responded to the Complainant’s attempts to buy the Domain Name and never contacted the Complainant.  There were no indications that the Respondent had actually tried to sell the Domain Name to the Complainant, nor to any third parties.  In light of this, the Panel found that the Respondent’s conduct in using the Domain Name was considered a bona fide offering of goods.

Therefore, the Panel concluded that the Complainant, having made out a prima facie case which was rebutted by the Respondent, had not fulfilled the requirements of paragraph 4(a)(ii) of the UDRP.  Given this finding, the Panel did not need to address the third limb as a complainant must cumulatively fulfill all three requirements under the UDRP.  However, the Panel decided to do so.

In the case at hand, the Complainant alleged that the Respondent’s only interest in the Domain name was to sell it to the Complainant at the highest possible price and that the Domain Name had therefore been registered and used in bad faith.

In response, the Respondent argued that he registered the Domain Name in 2016 in good faith for his colouring book project.  Having reviewed and considered the Complainant’s CLEVER CLOUD trademark, he came to the conclusion that the products and services covered by the Complainant’s CLEVER CLOUD trademark did not relate to his colouring book project, thus the Complainant’s rights were not impaired by the Respondent’s registration and use of the Domain Name.  Contrary to the Complainant’s assertions, the Responded denied having any intention to sell the Domain Name for profit and any statements regarding a possible value of the Domain Name were made because of the efforts invested in the described colouring book project for several years.

The Panel found in favour of the Respondent, considering that the Respondent had registered the Domain Name in good faith because the Respondent had credibly contended that the Complainant’s trademark rights were not impaired by the Respondent’s colouring book project.  Furthermore, the Panel was unconvinced by the Complainant’s arguments that the Respondent’s only interest in the Domain Name was to sell it to the Complainant at the highest possible price.

The Complaint was therefore denied.

Comment

This decision highlights the fact that trademark holders will not necessarily succeed in obtaining transfer of a domain name identical to their trademark under the UDRP, even if the respondent in question has some awareness of their rights.  In such cases, respondents may still be able to provide sufficient evidence that they have rights and legitimate interests in a domain name matching a complainant’s trademark, despite having no trademark rights themselves.

The decision can be found here.

Authored by Anchovy News Team