An Overview of the Uniform Domain-Name Dispute-Resolution Policy and A Case Study of UDRP: Examining Xiatech Consulting Ltd v. Privacy Administrator, Anonymize, Inc.

Abstract

This article discusses the Uniform Domain Name Dispute Resolution Policy (UDRP), an international policy domain names. The UDRP provides a quick and cost-effective way to resolve domain name disputes without the need for litigation. In this article, we will provide a brief overview of domain name dispute resolution and focus specifically on the UDRP and its use in resolving domain name disputes. Also this article provides an example of a UDRP dispute involving Xiatech Consulting Ltd and Privacy Administrator, Anonymize, Inc. over the domain name. The article also outlines the process for how the UDRP panel examines disputes by considering the complainant's allegations and the respondent's response, as well as reviewing any supporting evidence provided by both parties.

I. Introduction

In today's world, a domain name is an essential part of establishing an online presence. A domain name is a web address or URL that individuals or businesses use to identify themselves on the internet. However, disputes over domain names can arise when multiple parties claim ownership or rights to use a specific domain name.

II. What is a Domain Name?

Domain names are human-friendly forms of Internet addresses and are commonly used to find websites [1]. It allows individuals and businesses to have a unique online identity and is used to direct internet traffic to a specific website or email service. For example, turkishlawblog.com is a domain name that directs users to Turkish Law Blog’'s website.

III. What is UDRP?

UDRP is an international policy created by the Internet Corporation for Assigned Names and Numbers (ICANN) to address disputes over domain names. It is designed to provide a quick and cost-effective way to resolve domain name disputes without the need for litigation. UDRP is based on recommendations, made by WIPO in the Report on the First WIPO Internet Domain Name Process, focusing on the problems caused by the conflict between trademarks and domain names[2]. UDRP applies to generic top-level domains (gTLDs)[3], such as .com, .net, and .org, as well as some country-code top-level domains (ccTLDs)[4]. It is a mandatory procedure that applies to all domain name registrants who have agreed to the terms of service of their registrar. UDRP provides a streamlined process for resolving disputes related to domain names. When a complaint is filed under UDRP, it is reviewed by a panel of one or three arbitrators, who are independent and impartial experts in domain name law.

IV. How UDRP Examine Disputes

The UDRP panel examines the dispute by considering the complainant's allegations and the respondent's response, as well as reviewing any supporting evidence provided by both parties. The panel evaluates whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, whether the respondent has any legitimate rights or interests in the domain name, and whether the domain name was registered and used in bad faith. If the panel finds in favor of the complainant, it can order the transfer or cancellation of the disputed domain name. However, if the panel finds in favor of the respondent, the complaint will be dismissed and the respondent will be allowed to keep the domain name.[5]

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Examination

Xiatech Consulting Ltd   X   Privacy Administrator, Anonymize, Inc. Case No. D2022-1072

I. Summary

Xiatech Consulting Ltd filed a complaint against Privacy Administrator, Anonymize, Inc. for registering and using the domain name, which Xiatech claimed to be confusingly similar to its trademark. Xiatech argued that it had common law rights to the trademark "Xiatech." The respondent argued that Xiatech had not demonstrated any trademark or service mark rights and had no legitimate interest in the disputed domain name. The disputed domain name was registered on July 8, 2015, and the respondent claimed that it was not registered and is not being used in bad faith.

II. The Parties

a. The Complainant: Xiatech Consulting Ltd, United Kingdom;

“The Complainant provides technology consulting services, including big data solutions. It uses the domain name in connection with a website. On March 25, 2022, the Complainant filed United Kingdom trademark application No. 00003770339 for XIATECH, specifying goods and services in classes 9, 35, and 42. That application is currently pending.”

b. The Respondent: Privacy Administrator, Anonymize, Inc., United States of America;

“The Respondent is named as a privacy service. The underlying registrant’s identity has not been disclosed in this proceeding.”

III. Disputed Domain Name and Registrar

Disputed Domain name is, Registered with Epik, Inc.

IV. Background

a. The disputed domain name was registered on July 8, 2015.

b. After the Complainant contacted the Registrar regarding the disputed domain name, the Registrar informed it on February 1, 2022, that the owner had advised that the disputed domain name was only available by rental. On February 5, 2022, the Complainant replied that it was not interested in renting the disputed domain name and preferred to buy it.

V. Claims of the Parties

a. Claims of The Complainant;

• the “Xiatech” trademark has been used consistently since at least 2013 in connection with its services by complainant.
• The Complainant has delivered services worldwide, to the European Union and the United States.( t has been tried to show that the trademark is a well-known trademark.)
• The Complainant is the registrant of the domain name, which was registered in 2003, at which time the Complainant’s current Chief Executive Officer (“CEO”) was trading as a freelancer under the trade name “Xiatech”.
• The Complainant is widely recognized in its field and has won a number of accolades. In addition to its common law rights to the trademark “Xiatech”.
• “Xiatech” is not a dictionary word, common family name, or generic term, but rather a distinctive name chosen by the Complainant to designate its services.
• The Respondent has no rights or legitimate interests in respect of the disputed domain name.
• The disputed domain name was registered and is being used in bad faith by the respondent.

“The complainant bases this claim on that: the Respondent was aware, or should have been aware, of the Complainant’s businesses, if the Respondent had conducted a basic search for the word “Xiatech”. “Xiatech” is a coined word and the Respondent would not plausibly stumble upon it independently."

b. Claims of The Respondent;

• The Complainant has not demonstrated trademark or service mark rights.
• The Respondent has rights or legitimate interests in respect of the disputed domain name.
• The disputed domain name was not registered and is not being used in bad faith.
• The Complainant brought this case in bad faith.

VI. Decision of Panel

Paragraph 4(a) of the Policy provides that a complainant must prove the following elements:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

ii. the respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

The complainant failed to present sufficient evidence to substantiate the allegations, therefore The Complaint is denied. Also, Panel decided that the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding According to Paragraph 15(e) of the Rules. “the Panel infers that the Complainant resorted to the Policy as “Plan B” after failing to acquire the disputed domain name from the Respondent, or to increase its bargaining leverage.”

VII. Examine the Decision

I am of the opinion that the decision made by the panel on the incident was appropriate. This is because the complainant is unable to prove the elements that it is obliged to prove according to Policy, main purpose is to actively use the domain and to see this administrative path as a bargaining element.

“It does not like the terms offered to use the disputed domain name so is employing the UDRP as a low-cost alternative to paying fair market value for a premium. The Complainant is now trying retroactively to claim rights on a mark it does not yet have and usurp a high-value domain having failed to obtain it at public auction or through negotiations with the owner.”

The Complainant failed to prove any element which it was must to prove under Paragraph 4(a).

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (Paragraph 4(a) / (i))

Even if the Complainant has registered a local trademark, The registration request has not yet been accepted. The party does not yet have international or local trademark protection. Moreover, as a result of short research, it was understood that The Complainant’s trademark “Xiatech” as not distinctive as enough. Although the complainant claimed that his brand was a world-known brand, he could not produce any evidence to prove this.

“According to claims of Respondent, the term “xiatech” is a combination of the common words “Xia”, the name of the first Chinese dynasty, and “tech”, which has numerous dictionary definitions related to technology. Also, the respondent provided quite fairly evidence to proof that claim.”

“The Respondent acquired the disputed domain name in a public auction in July 2015. The Respondent bid on the disputed domain name because it is a creative combination of two popular and generic words.”

“Prior to bidding on the disputed domain name, the Respondent performed a trademark search in its home country (the United States) and found no records. The same search yields no results today. The Complainant provides no evidence to support a claim that the Respondent had knowledge of the Complainant’s rights, only speculation.”

ii. the respondent has no rights or legitimate interests in respect of the disputed domain name; and (Paragraph 4(a) / (ii))

When the commercial field of activity of The Respondent is examined, The Respondent’s purchase or sale of a domain is a transaction made by The Respondent in accordance with its business activity. The Respondent has a legitimate interest in purchasing this domain.

“The Respondent is in the business of buying, developing, and selling websites and high-value domain names comprised of generic and descriptive terms of which the disputed domain name is among the many in its inventory. There is a wide scope of possible uses for these domains including email, website development, and resale.”

iii. the disputed domain name has been registered and is being used in bad faith. (Paragraph 4(a) / (iii))

When the incident is examined, it is understood that the domain is passive and used as a means of commercial activity.  Although examples Evidence of Registration and Use in Bad Faith enumerated in Paragraph 4(b) of the policy, they are not limited. The Complainant failed to prove Bad Faith.

VIII. Final Thoughts

Considering all these cases, the panel's decision is appropriate.

The case study of Xiatech Consulting Ltd v. Privacy Administrator, Anonymize, Inc. provided an example of how the UDRP works in practice. In this case, Xiatech Consulting Ltd filed a complaint against Privacy Administrator, Anonymize, Inc. for registering and using the domain name, which Xiatech claimed to be confusingly similar to its trademark. The UDRP panel examined the dispute by considering both parties' arguments and evidence and ultimately found in favor of the respondent. The decision highlights the importance of providing clear evidence of trademark or service mark rights and legitimate interests in the disputed domain name when filing a complaint under the UDRP.

Overall, the UDRP has been successful in resolving domain name disputes and providing a fair and efficient process for all parties involved. As the internet continues to evolve, it is likely that the UDRP will continue to play an important role in ensuring that disputes over domain names are resolved fairly and efficiently.

[1] https://www.wipo.int/amc/en/center/faq/domains.html#1

[2] https://www.wipo.int/amc/en/center/faq/domains.html#1

[3] https://www.wipo.int/amc/en/center/faq/domains.html#3

[4] https://www.wipo.int/amc/en/center/faq/domains.html#4

[5] https://www.wipo.int/amc/en/center/faq/domains.html#5

Tagged with: Intellectual Property, Domain Names, Domains, UDRP, WIPO