A lawsuit centering around infringement of TM rights & transfer of domain name ownership in Europe & the US has recently been filed. However, because the plaintiff failed to provide sufficient proof, the court found their case too weak & decided to hand down a verdict in favor of a defendant. So, let’s take a closer look at how settlement of disputes involving domain names in the US & EU takes place & why the plaintiff lost their case.
How It Happened
The lawsuit was filed by a company formerly known as MoneyDesktop. Renamed to MX Technologies in 2014, it has been providing software for financial institutions ever since & never once tried to resolve a TM-based domain name dispute in the EU or US.
The dispute centered around the domain name ᴍx.com, which was registered on March 5, 2019 and transferred to the defendant on May 20, 2019. The defendant made an unofficial statement that the domain name no longer belonged to them and apologized (thus hoping to resolve a domain name dispute in the EU & US to the mutual satisfaction of both parties). They also sent a letter from the registrar stating that they were no longer authorized to manage the said domain name.
Having looked into the evidence, the court issued a procedural order whereby the defendant was offered to transfer a domain name in the EU or US, while the plaintiff was offered to explore other options of settling a dispute involving a domain name in America & Europe. However, the defendant ignored the procedural order.
EU & US: File a Domain Name Complaint
There’s three main requirements a complaint must meet:
- First, it must be proven that a domain name is misleadingly similar or identical to someone else’s TM. It was confirmed that MX Technologies was a legal owner of the TM & that the defendant’s domain name matched it.
- Second, proof must be provided that no other parties have a right to apply for registration of a domain name in Europe or America. MX Technologies presented such proof; and so did the defendant. However, because the latter failed to respond in a formal manner, it was decided that they couldn’t collect the necessary information enabling them to settle a domain name dispute in North America or Europe.
- Third, it must be proven that a bad faith tactic was used while registering a domain name in the EU & US. MX Technologies tried to confirm by citing the fact that one of their customers reported it on more than one occasion. After examining an e-mail furnished as evidence by the plaintiff, the court ruled that it was nothing but a notice of a domain name registration in Europe & America and potential risks. Accordingly, it couldn’t be deemed an indication of any suspicious or bad faith activity.
To sum up, proving that a bad faith tactic was used while registering & using a domain name is absolutely critical in all domain name-related disputes.
Should you need advice on settling a dispute involving a domain name in Europe or America, you’re more than welcome to contact IQ Decision UK. Our team of advisors are always on standby to provide you with assistance in settlement of disputes over domain name infringements in Europe or the US.