Recently, the US and EU saw a lawsuit about TM rights violation and transfer of domain name. The result of the case was the court’s decision to hand down a verdict in favor of the defendant since the proof provided by the plaintiff were not considered sufficient enough. However, for us, it is a perfect opportunity to explore how disputes on domain name rights are arranged and figure out what was the reason for the plaintiff to lose their case.
Circumstances
In the mentioned case a company that filed the lawsuit was earlier identified as MoneyDesktop. Later, in 2014, it gained a new name of MX Technologies and started providing software for financial institutions. Before this company never had had an attempt to resolve any similar disputes that centered around TM-based domain names in the US or EU.
It was the domain name mx.com that the dispute was all about. The domain name was registered on March 5, 2019 and passed to the defendant on May 20, 2019. According to the defendant’s unofficial statement and apology, the domain name was not in their ownership anymore. Consequently, the defendant party was hoping that the dispute could be resolved to the mutual satisfaction of both parties. In addition, they provided a letter from the registrar to prove that they no longer have the authorization to manage the domain name mx.com.
After examining the provided evidence, a procedural order was issued by the court. It offered the plaintiff to look for some other variants to settle their dispute on a domain name and the defendant to transfer a domain name in the US or EU. Nevertheless, the procedural order was not followed by the defendant.
Requirements for a complaint
To find a domain name complaint in the EU or US orderly, it must include these requisites:
- It is necessary to provide sufficient proof of the fact that a domain name is misleading for customers as it is too similar or even identical to someone’s TM. In the case of MX Technologies, this condition was fulfilled – the defendant’s name was too similar.
- It is necessary to provide evidence of the exclusive right for a domain name registration in the EU or US. In fact, both MX Technologies and the defendant did so, they both provided proof. Nevertheless, the defendant was not able to respond formally and officially. This fact was interpreted as a lack of sufficient information.
- It is necessary to prove that the registration of a domain name in the EU or US was done in bad faith tactic. As such proof, MX Technologies cited that one of their customers submitted several reports about the identical domain. The court analyzed provided e-mail communication and decided that such reports can only be taken as a notice of an alike domain name registration in the European Union or the US and the potential risks connected to such a situation. Therefore, this was not viewed as a bad faith activity and suspicious action.
The final word
The recap of the dispute about the domain name rights is the following: disputes centered around domain names demand sufficient proof of a bad faith tactic while registering and using a domain name.
In case you are also in the process of settling a domain name dispute in the European Union or the USA, do not miss a chance to receive help and advice from COREDO specialists. Our team will assist in the dispute in case your domain name rights were violated.