In a recent UDRP decision (Case No. D2024-1579), the domain name was at the center of a dispute between Calmino group AB (the Complainant) and Domain Administrator, DomainMarket.com (the Respondent). This case offers valuable insights into how domain investors can successfully defend against UDRP complaints.
The PROIBS.com UDRP Parties:
- Complainant: Calmino group AB, a Swedish healthcare company focusing on gut health
- Respondent: Domain Administrator, DomainMarket.com, a US-based domain name investor
Key Facts in the PROIBS.com case:
- The disputed domain was registered by the Respondent in 2011
- The Complainant owns trademark registrations for PROIBS, including a 2009 Swedish registration and a 2014 US registration. It operates from proibs.eu
- The Complainant owns a portfolio of trademark registrations for PROIBS including Swedish Registration No. 403803, with a registration date of May 15, 2009, and United States Registration No. 4570968, with a filing date of June 21, 2013, and a registration date of July 22, 2014.
- WHAT IS PROIBS®? PROIBS® is a certified medical device product for the treatment of symptoms related to IBS such as abdominal pain, bloating and changes in bowel movement (diarrhea and/or constipation).
- No ProIBS products appear for sale on the Amazon US marketplace.
- The proibs.com domain was listed for sale at $194,888 at the time of the complaint by Mike Mann’s on Domain Market marketplace
The PROIBS.com UDRP Decision:
The panelist, John Swinson, denied the complaint, finding that the Complainant failed to prove bad faith registration and use by the Respondent.
Respondent’s Key Evidence:
- Declaration stating they registered the domain without knowledge of the Complainant’s trademark
- Evidence of registering multiple “pro-” prefix domains as part of their business model
- Explanation of their domain pricing practices, including the initial lower price of $8,000 in 2011
- Lack of competitive use or targeting of the Complainant’s business
- Record of the Complainant contacting them in 2011 without mentioning trademark rights
Cases and WIPO Sections Cited:
- WIPO Overview 3.0, sections 1.7, 1.2.1, 4.16
- Fifth Street Capital LLC v. Fluder, WIPO Case No. D2014-1747
- Sage Global Services Limited v. Narendra Ghimire, WIPO Case No. DAI2023-0010
- So Bold Limited v. TechOps, VirtualPoint Inc., WIPO Case No. D2022-1100
- Sütaş Süt Ürünleri Anonim Sirketi v. Privacy Administrator, WIPO Case No. D2022-0615
The panel also referenced principles from:
- Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540
- TranScrip Partners LLP v. Abstract Holdings International Ltd, WIPO Case No. D2021-2220
Key Takeaways:
- Legitimate domain investing is a recognized business model under the UDRP
- Respondents can overcome high sales prices if they can demonstrate good faith registration
- Geographic separation and timing of trademark registrations can be crucial factors
- Maintaining records of business practices and registration motives is essential
- Comprehensive responses addressing all allegations are more likely to succeed
This case serves as a reminder that while the UDRP protects trademark holders, it also recognizes the legitimacy of good faith domain investing. Domain investors should be prepared to provide clear evidence of their registration intent and business practices to successfully defend against UDRP complaints.
Lessons and some additional aspects of this UDRP decision and its implications:
- Burden of Proof: The case reinforces the importance of the complainant’s burden of proof in UDRP proceedings. The panel emphasized that “an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence.” This underscores the need for complainants to provide substantial evidence, not just assertions, when filing UDRP complaints.
- Timing of Complaint: The long delay between the domain registration (2011) and the filing of the complaint (2024) likely worked in the respondent’s favor. While laches is not typically a defense in UDRP cases, panels may consider lengthy delays when assessing bad faith claims.
- Generic Terms: The panel noted that “IBS” is a common acronym for “irritable bowel syndrome,” and the respondent provided examples of other health products using similar terms. This highlights the importance of considering whether domain names incorporate generic or descriptive terms that might have value beyond a specific trademark.
- Respondent’s Track Record: The decision mentioned that the respondent had been involved in about 16 previous UDRP cases, winning roughly half. This mixed record was not seen as determinative of bad faith in this specific case, illustrating that panels typically focus on the facts of each individual case rather than a respondent’s overall UDRP history.
- Price Fluctuations: The respondent’s explanation of how they adjust domain prices over time was accepted by the panel. This suggests that high asking prices alone are not necessarily indicative of bad faith if the respondent can provide a reasonable explanation for their pricing strategy.
- Lack of Targeting: The absence of any evidence that the respondent attempted to sell the domain to the complainant or its competitors was significant. This reinforces the principle that merely registering a domain that matches a trademark is not enough to prove bad faith – there needs to be some evidence of targeting the mark owner.
- Importance of Business Records: The respondent’s ability to provide details about past interactions with the complainant (e.g., the 2011 inquiry) highlights the value of maintaining detailed business records for domain investors.
- Passive Holding: The panel did not find that the respondent’s passive holding of the domain (i.e., not actively using it for a website) constituted bad faith. This aligns with UDRP precedent that passive holding alone is not determinative of bad faith.
- Trademark Jurisdiction: The case illustrates the potential challenges for trademark owners when dealing with domain registrants in different countries. The complainant’s Swedish trademark registration was not seen as putting the US-based respondent on constructive notice.
- Future Implications: This decision may serve as a reference point for future cases involving domain investors, particularly those dealing with domains that incorporate common terms or acronyms that might have multiple meanings or uses.
Overall, this case provides a comprehensive look at how panels should evaluate UDRP complaints against domain investors and underscores the high bar complainants must clear to prove bad faith registration and use when dealing with professional domain portfolio holders.