4 June 2021
Through the domain name recovery procedure (UDRP) before the World Intellectual Property Organization (WIPO), H&A has obtained a favourable decision ordering the transfer of the domain name to the complainant, a major pharmaceutical company. The domain name in question consists mainly of the trademark of one of our clients, so the fact that it was in the hands of a third party with no rights or legitimate interests was counterproductive and could pose a serious problem.
Before proceeding to file the complaint, we carefully analysed whether the three requirements established by the UDRP for .es domains to be eligible for domain name recovery were met:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the domain holder has no rights or legitimate interests in respect of the domain name, and
- that the domain name has been registered and/or is being used in bad faith.
Both the first and the second requirement were fulfilled, as the complainant had a prior right identical to the domain, and the owner of the domain had no rights or legitimate interests.
Concerning the last requirement, it should be noted that the domain name was registered after the registration of the trademarks and, just after the Complainant registered a series of territorial and generic domains with identical trademarks, the domain name was for sale at SEDO and redirects to a pay-per-click website. The accumulation of such evidence or facts leads to the conclusion that the registration and use of the domain name were made in bad faith.
As stated in the decision, [HA1] the registration was in bad faith and infringed the client’s prior rights, and therefore, the expert has ordered its transfer to the rightful owner.