In a recent UDRP decision, aPanel ordered the transfer of the elkeem.com domain from its registrant to the complainant Elkem ASA, a Norwegian company. However, this decision appears to be a case of trademark overreach that went too far.
First, let’s look at the domain name itself – elkeem.com. This is based on the Arabic word “elkeem” which means “value.” So right off the bat, this is a domain with inherent value comprising an ordinary dictionary word, which should make it harder for a trademark claim to succeed.
The complainant Elkem ASA argued that elkeem.com is confusingly similar to their trademark ELKEM, which they have registered in various countries. However, a quick search on OpenCorporates.com reveals there are 284 other businesses globally that use “Elkem” in their name. So ELKEM is clearly not a unique or famous trademark deserving of broad protection.
Moreover, one of the core principles under UDRP jurisprudence is that it’s generally permissible to register domains comprising dictionary words, even if they overlap with trademarks, unless there is clear evidence of targetting a specific rights holder. In this case, the registrant stated he registered elkeem.com because he liked the intrinsic value of the word “elkeem” meaning “value” in Arabic, rather than targeting Elkem’s mark.
By ordering transfer of this dictionary word domain to the complainant, this Panel decision contracted established UDRP principles and gave an unjustified windfall to the complainant. It sends a troubling signal that even valuable dictionary domains could be at risk if they bear even a vague resemblance to an existing trademark.
Perhaps this was just an aberrant outlier decision. But trademark owners would be wise not to read too much into it as a license to indulge in discriminate domain windfall attempts at the expense of legitimate registrants. The UDRP has enough robust principles in place to weed out clear-cut cybersquatting cases without enabling overreach into generically valuable domains. One can only hope future panels apply those principles more judiciously.
In this administrative panel decision regarding a domain name dispute between the complainant Elkem ASA, a Norwegian company, and the respondent Jungyunkook from South Korea over the domain name .
The main points from the WIPO UDRP panelist’s decision are:
Elkem ASA v. Jungyunkook
Case No. D2023-4737
- The Complainant is Elkem ASA, Norway, represented by Zacco Norway AS, Norway.
- The Respondent is Jungyunkook, Republic of Korea.
- Elkem ASA owns registered trademarks for ELKEM in various jurisdictions including the U.S., Korea, China and EU. It has been using the ELKEM mark for decades.
- The disputed domain is confusingly similar to Elkem’s ELKEM trademark, differing only by an extra letter “e”.
- The panelist failed to discover or mention that “elkeem” is the Arabic word for “value.”
- The panelist concluded that the respondent has no rights or legitimate interests in the domain name.
- The landing page is a typical webpage with pay-per-click links.
- The respondent registered and is using the domain name in bad faith, intending to create confusion with Elkem’s mark and trademark for commercial gain.
- Considering the evidence, the panel rules in favor of the complainant and orders the transfer of the domain name to Elkem ASA.
- In summary, the panel found the domain was confusingly similar to Elkem’s trademark, that the respondent had no legitimate interests, and it was registered and used in bad faith by trying to improperly capitalize on Elkem’s rights.
What do you think? Was this a case of trademark overreach?
Elkeem.com whois information as of 2024 March 5
- Name: ELKEEM.COM
- Registry Domain ID: 2686069600_DOMAIN_COM-VRSN
- Domain Status:clientTransferProhibited
- Nameservers:NS1.SEDOPARKING.COMNS2.SEDOPARKING.COM
Dates
- Registry Expiration: 2024-04-01 18:12:55 UTC
- Updated: 2023-11-22 23:50:57 UTC
- Created: 2022-04-01 18:12:55 UTC
Registrant:
- Organization: Koreacenter co.,Ltd
- Kind: individual
- Mailing Address: Seoul, KR
- Registrar Information: Name: Koreacenter co.,Ltd
- IANA ID: 1491