I have a registered trademark – so naturally I have the rights to the domain name, right?

Industry news , Legal , Trademark protection

Ports Group has won the dispute over the domain name flygresor.com for our client, Westcoast Digital AB, after Svenska Resegruppen AB (the owner of the domain and trademark flygresor.se) tried to claim better right to this domain name – a case that was brought to attention by Word Trademark Review last week. Ports Group’s trademark attorney Johanna Rafstedt will in this article walk you through the reasons for this outcome, and what one should think about in questions regarding trademarks/domain names.

First and foremost, we need to understand how disputes regarding domain names work, and what organizations that is responsible for these processes. Domain name disputes are handled differently depending on which top-level domain (for example .COM, .SE, .DE) the dispute is about. However, disputes regarding generic top-level domain, such as .COM, .NET, .ORG, are handled by World Intellectual Property Organization, short form WIPO, through their dispute process UDRP (Uniform Dispute Resolution Policy).

This February WIPO decided through their dispute process UDRP that the owner of the domain name and trademark flygresor.se do not have better rights to the domain name flygresor.com. The decision was due to the fact that Svenska Resegruppen AB (“Complainant”) could not prove that the current owner of the domain name, Westcoast Digital AB (“Defendant”), lacked a legitimate interest in the registered domain name.

But as a trademark owner, don’t you automatically have the right to the associated domain name?

Well, not necessarily. As a starting point, when it comes to domain name registrations the “first to file” principle apply. This basically means that the person/organization that first registered a domain name is the legal owner of that name. However, as a trademark owner there is often a possibility to claim better right to a domain name that reflects one’s registered trademark. According to WIPO’s dispute process UDRP, three requisites must be met in order for a trademark holder to prove better right to a domain name.

  1. First, the domain name must be confusable with a registered trademark right
  2. Secondly, the holder must lack a legitimate interest in the domain name
  3. Third, the holder must use and/or have registered the domain in bad faith

If, as a trademark owner, one can prove that all three of these requisites are fulfilled there are prerequisites for having the domain transferred to one self via the UDRP dispute resolution procedure.

In the notable case “flygresor.com“, the complainant, Svenska Resegruppen AB, did not succeed in demonstrating that all the requisites were fulfilled despite their right in the registered trademark flygresor.se. This resulted in that our client Westcoast Digital AB got to keep their domain name flygresor.com.

This is due to the fact that the disputed domain name flygresor.com was registered in 2012 and thus before the complainant registered the trademark flygresor.se in 2017. WIPO also considered that Svenska Resegruppen AB could not demonstrate that their trademark flygresor.se, at the time of the disputed domain name’s registration, had trademark protection. Therefore, since Svenska Resegruppen AB did not have a registered trademark for flygresor.se, in combination with the fact that the word “FLYGRESOR” is considered to be generic (in other words of descriptive character), concluded in WIPO deciding that Svenska Resegruppen AB had failed to prove that Westcoast Digital AB lacked a legitimate interest in the registered domain name. By extension this meant that not all the requisites according to WIPO’s UDRP was met – and the domain name flygresor.com was to be retained by our client.

The decision in the case flygresor.se/flygresor.com demonstrated first of all the importance of all the requisites/requirements being fulfilled in order to prove better right to a domain name according to WIPO’s regulations. For a trademark owner, it is therefore not self-evident that one has better right to a domain name even though one has a registered trademark, but all relevant circumstances in each specific case must be taken into account.

Secondly, the case also demonstrates the importance of having a secure and updated domain and brand portfolio, where you continuously work strategically and proactively to secure your legal and digital rights. Ports Group has many years of experience in domain name disputes and strategic counselling regarding domain and trademark protection, and we are helping some of Sweden’s most well-known trademarks with similar questions.

For questions or counselling within this area, do not hesitate to contact us.

Do you want to know more about domain name disputes? Get in touch today!

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