Too Bad, So Sad – The UDRP Is Not A Cure For Failing To Renew And Lock Your Domain Names

By Steve Levy

One of the many benefits that FairWinds brings to its clients is advising them to put their valuable domain names on auto-renew and registrar lock. This seems quite obvious to brand owners who are familiar with this quirky and niche field but apparently it’s not to so many other companies. A recent UDRP case against the domain is the latest in a recent parade of sad stories where valuable domains, some that have been used for decades, are lost due to inadvertent expiration or theft. Here, the Complainant, a Swiss producer of luxury watches, owns trademarks for the CENTURY mark dating back over thirty years and it purchased the domain in 2006 for “a considerable six-digit sum.” It claims that it noticed its website was down in July of 2023 and that the domain had been moved to another registrar but it provides no details. The Respondent stated that its “employee inquired about the domain and was allowed to purchase it.” (Also, no details are provided). The Complainant goes on to say that “the Respondent acquired the [disputed domain name] using or as the result of unlawful or fraudulent means” and that “Respondent intended to sell the [disputed domain name] for a hefty profit; engage in fraudulent activities; capitalize on Complainant’s reputation; and/or intentionally mislead and confuse customers” who are looking for Complainant. What the Complainant, or its lawyers, either didn’t know or didn’t appreciate is that the Respondent is a company that has been around since 1995 using the CENTURY name for a business involved in providing aluminum products and that it has its own trademark registrations for the mark. The Respondent also claims that it had never heard of the Complainant at the time that it purchased the domain.

In denying the UDRP complaint, the panel noted that the Respondent, as a legitimate business using the CENTURY trademark, is using the domain to make a bona fide offering of goods or services under par. 4(c)(i). It also found that there is no evidence that the Respondent acquired the domain name in bad faith under par. 4(a)(iii) since it was not trying to create confusion with the Complainant’s trademark, divert customers away from the Complainant, sell the domain back to the Complainant, or otherwise target the Complainant’s CENTURY trademark. After all, the parties are in completely different lines of business so customers looking for the Complainant’s luxury watches are not likely to make a purchase of aluminum products from the Respondent.

The bottom line here is that the UDRP is not the right tool for this job. It’s possible that something sketchy happened to the Complainant’s domain name but that’s a claim it should bring against its own registrar in a court of law. The UDRP is only designed for cases of cybersquatting where the Respondent is trying to target the Complainant’s mark and leverage its brand reputation for some commercial advantage. Since that’s not what happened here, the case failed and the Complainant is back to square one in trying to figure out how or if it can recover its lost domain name. Also noteworthy here is that the lawyers who filed this case now have to backpedal with their client and explain why they wasted the client’s time and money on this UDRP expedition that was doomed to failure from the start.

At FairWinds, we never shy away from being up front with clients when the UDRP is not the right approach for their situation. However, we have many other tools in our kit and, based on our decades of experience in this field, will always advise clients on the approach that is most likely to achieve the desired outcome without wasting precious budget resources going down unproductive dead ends.

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