When business partners part, disputes over domains are often inevitable. In the present UDRP procedure for the domains 0456.com and 9527.com, there was also the fact that brands have been applied for but not yet registered. In addition, the domains have hardly had an audience in just over three years of use, so that there can be no question of customary marks. The decision was easy for attorney Dennis A. Foster.
When two business partners separated, one took away the domains 0456.com and 9527.com, for which the other had just applied for trademarks. Xiaoqiang Li (China) couldn’t let the domain hijacking sit down and took action against his former colleague and current domain owner Linfang Dou (China) in a UDRP procedure before the Forum (NAF). The complainant relies on the trademarks “0456.COM” and “9527.COM” he has applied for. During the business relationship, he was the owner of the domains 0456.com and 9527.com, and the opponent had withdrawn the domains from him when the business relationship ended. Therefore, the opponent has no own rights to the domains, and since then he has been using them illegally and therefore in bad faith. The opponent counters that there are no trademark rights and that the trademarks have not yet been registered. When the business relationship expired, he had asked the complainant to let him have the domains, which he had refused. Nonetheless, he is now the owner of the domains that have gained a certain popularity and which he uses sensibly and sensibly. There can be no question of bad faith; he only secured the domains because of the end of the business relationship and not with bad intentions or to denigrate the registered trademarks. The US attorney Dennis A. Foster was appointed as the decision-maker.
Foster dismissed the complaint because he could not find a trademark in favor of the complainant and he also did not see the two other elements of the UDRP fulfilled (NAF Claim Number: FA2201001982516). It was a general opinion that merely applied for trademarks did not meet the requirement of the UDRP for the existence of a trademark right. But the examination of customary trademarks, about which the complainant had not submitted anything, was negative for him: An attachment that the complainant had submitted shows that both domains, which he has been using since October and December 2018, have had only a few visitors exhibited and brought income. 0456.com has since brought in just US$3,000 against an estimated advertising spend of US$1,500. For 9527.com, these figures would be US$2,000 in revenue and US$1,000 in advertising expenses. Web visits would be around 300 a month (about 10 a day) for the former and 200 a month for the latter. This low data, after the domains have been active for almost four years, does not come anywhere close to a value on the basis of which one can assume that the complainant has established customary brands here. For this reason, the complainant failed to fulfill the first element. Foster did not examine the other two elements of the UDRP, but at the same time stated that they had not been complied with by the complainant. He therefore decided that the domains remain with the opponent of the procedure.
Here we have a domain dispute from former business partners that was not too complex for the UDRP procedure. It is interesting that the panellist examines beyond the specific submission of the complainant whether he has developed customary marks due to the use of the domains. The data available for this, on the basis of which Foster linked the negative finding, are actually so low that they unfortunately cannot be used to draw a boundary in future cases. With such low expenses, income and access, however, one can be sure that a custom mark has not emerged. Unfortunately, Foster did not include any other criteria. When examining such data, it should also be useful to evaluate the industry, the target audience, the competitors and similar information in order to be able to determine the value of the expenditure, income and website access at which there can be talk of the emergence of habitual brands.
–
