In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name cookinglife.com because the complainant did not provide sufficient evidence that the domain name was registered in bad faith.
The Complainant was Webshop Beheer BV, a company based in the
Netherlands. It was the owner of a European Union Trade mark
in COOKINGLIFE, filed in October 2015 and registered in February
2016. In addition, one of its subsidiaries owned the domain
The Respondent was Matt Myers, an individual based in Canada.
The disputed domain name was
In view of expanding its presence on the Internet and owning a domain name under the generic extension .COM, the Complainant contacted the Respondent in November 2018 offering to buy the Domain Name for EUR 3,000. Further to the Respondent's rejection, the Complainant asked the Respondent to make a counter-offer, which he did not.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identity / similarity
With regard to the first requirement, the Panel found that the Complainant had established trade mark rights in the term COOKINGLIFE, and the Domain Name was confusingly similar to the Complainant's trade mark, relying on section 1.7 and section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). The first limb was therefore satisfied.
Rights / legitimate interests
In light of the panel's finding that the Complainant had not succeeded in proving bad faith under the third limb, it was not necessary for the panel to make a finding under the second limb with regard to the Respondent's rights or legitimate interests.
Turning to the third limb of the UDRP, to be successful a complainant is required to demonstrate that the domain name has both been registered and is being used in bad faith.
In the present case, the Complainant contended that it had used
its domain name
The Respondent argued that he did not have knowledge of the Complainant, providing a redacted email as evidence that he originally thought of using the term “Cooking life” as a potential brand name in 2013, although he did not take any action before 2017. He further explained that the lack of activity on the website associated with the Domain Name was due to medical issues and high ambitions. However, the Panel noted that the Respondent had not submitted any material in support of his claim nor demonstrated any concrete preparations to use the Domain Name.
In the Panel's view, there was uncertainty as to whether that the Respondent was aware of the Complainant’s trade mark when he acquired the domain name.
As stated in section 4.2 of the WIPO Overview 3.0:
"The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”; some panels have also expressed this as an “on balance” standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true."
In the Panel's view, regardless of the meaning in other languages, in English the expression “cooking life” was a common or descriptive expression, and the Respondent had also submitted some materials demonstrating use of such a term to refer to cooking activities. The Panel noted that the Complainant’s website was very clearly directed to Dutch-speaking Internet users while the Respondent was based in Canada. In addition, there was no evidence to suggest that the Complainant was conducting business in North America or had North American customers. Therefore, the Panel was unable to infer that the Respondent was likely to have been aware of the Complainant or its trade mark when he acquired the Domain Name. It was possible, but mere possibility did not reach the applicable standard of proof under the UDRP.
Finally, the Panel noted that rejections of offers of payment in excess of purchase costs did not in themselves lead to an inference of bad faith, but that they may do so where there was a clear inference that the rejection arose because the respondent was holding out for an even larger payment. Similarly, in some circumstances, a failure to use a domain name may lead to an inference of bad faith, but that was generally in circumstances where the distinctive feature of the domain name was not descriptive or generic and the domain name had value because of its significance as a third party's trade mark.
In light of this, the Panel considered that no inference could be made from the circumstances of the present case. The Complaint was therefore denied.
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