Sarmad Hasan Manto
Managing Partner
Audiri Vox
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center ordered the transfer of the infringing domain name to the Complainant, a company based in the United Arab Emirates. The decision, issued in case number DME2025- 0005, concluded a contentious dispute between the Complainant and the Respondent.
In this matter, the Complainant was represented by Audiri Vox. Following the required procedural steps, including verification of registrar details and opportunities for both parties to submit filings and responses, a three-member Panel was constituted on the Respondent’s request.
Throughout the proceedings, both the parties submitted multiple rounds of filings. The Panel issued two procedural orders to clarify important details, such as the timeline of the Respondent’s business activity and domain name use.
The Dispute: A Summary of the Facts
The Complainant is the intellectual property arm of a well-established online real estate advertising platform. Its roots trace back to as early as 1995, with increasing use and visibility in the real estate sector and online advertising. The Complainant owns multiple trademark registrations in the UAE and abroad related to advertising and real estate services.
The Respondent registered the impugned domain name on July 21, 2008, but according to evidence from the Wayback Machine, the domain remained inactive or for sale until at least late 2021. It was only in April 2024 that the domain began resolving to a functioning real estate website. The Respondent subsequently incorporated companies in several jurisdictions under the disputed name, including in the UAE, and filed for trademarks in countries other than the UAE. This clearly showed bad faith of the Respondent and his attempt to legalize the infringing use of the impugned domain name. The Complainant argued that registering a company name does not confer rights to use a domain name when a registered trademark, such as the ones held by the Complainant in the UAE, already existed. This has been established through several precedents. Please see [WIPO Case No. D2021-4018]; [WIPO Case No.D2021-2187]; [WIPO Case No. D2022-0376]; [WIPO Case No. D2021-3458]. Accordingly, it could be inferred that adoption of an identical domain and mark for similar services was intended to capitalize on the reputation and goodwill of the Complainant’s well-known trademark.
Jurisdictional Challenge Rejected
The Respondent initially contested the Panel’s jurisdiction, asserting that both parties operate in the UAE and that only UAE courts had authority. The Panel dismissed this argument, pointing out that the Respondent had agreed to be bound by the UDRP when registering the domain name. This constituted consent to the administrative process, which operates independently of the national court systems.
Panel Findings
The Panel considered the three core elements of the UDRP:
Identical or Confusingly Similar:
The Panel found that the impugned domain name is identical to the Complainant’s registered trademarks. Disregarding the “.me” country code top-level domain, the domain consists solely of the trademarked term. The Panel also rejected arguments that the Complainant’s trademark is merely descriptive, noting its successful registration as a trademark in the UAE and other countries.
No Rights or Legitimate Interests:
The Complainant made a prima facie case that the Respondent lacked rights or legitimate interests in the domain. The Respondent’s reliance on company registrations and trademark applications was undermined by the fact that these actions took place many years after the Complainant had established its brand. Moreover, the Panel was not convinced that the Respondent’s use of the domain, initiated after the Complainant’s brand was well established, qualified as bona fide use. The Panel found no evidence of independent rights favouring the Respondent, predating the Complainant’s trademark use.
Registered and Used in Bad Faith:
The Panel concluded that the Respondent likely registered and used the domain name to exploit the Complainant’s trademark reputation. The timing of the Respondent’s business launch, combined with the nature and scope of its services, suggested deliberate targeting of the Complainant’s mark and clientele. Given the Complainant’s extensive use and registration of the trademark in the UAE and region, the Panel deemed it improbable that the Respondent was unaware of the Complainant’s brand.
Decision
Having satisfied all three elements required under the UDRP, the Panel ordered the transfer of the impugned domain name to the Complainant.
Conclusion
This decision reinforces the importance of trademark rights in domain name disputes and the risks of adopting domain names that mirror established brands. The decision clarifies that mere registration of a company in the concerned jurisdiction or a trademark in a foreign jurisdiction, after the Complainant’s trademark has become well-known, is not sufficient to establish Respondent’s bona fide. It also highlights the robustness of the UDRP process in resolving such disputes fairly and efficiently.