A UDRP Complaint Will Not Settle A Trademark Issue

In a recent decision under the World Intellectual Property Organization’s (WIPO) Uniform Domain Name Dispute Resolution Policy (UDRP), a Panel denied the transfer of the Domain Name at issue, finding that the Respondent had rights in the Domain Name based on its registered trade mark, despite the fact that the Complainant had filed a cancellation action.

The Complainant was Future Inns UK Limited, a firm that has been running a hotel chain in the United Kingdom since 2005. It advertised its hotels using its website, which used the domain name futureinns.co.uk, which it registered in 2002, as well as through numerous online media. Aside from its online presence, the Complainant also had a UK trade mark in FUTURE INN, which was registered in 2003. In a simultaneous trade mark action, the Respondent sought revocation of this trade mark.

Sotirios Kopatsaris was the Respondent, the founder and CEO of Future Hotels International Single Member PC, which was formed in Greece in February 2019. He was also the sole director and main stakeholder of Future Hotels Limited, which was established in the United Kingdom in 2020. Future Hotels Limited had the UK trade mark FUTURE HOTELS, which was registered in 2020. In a parallel trade mark case, the Complainant sought cancellation of this trade mark.

The contested Domain Name was thefuturehotels.com, which was registered on January 21, 2019. It resolved to a website promoting the Respondent’s “Future Hotels,” which are described as “a global community of award-winning hoteliers, technologists, researchers, and travel agents on a mission to redefine what it means to be an independent hotel in the twenty-first century – and beyond.”

To be successful in a UDRP complaint, a complainant must meet the following three requirements:

(a) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(a) The respondent has no genuine rights or interests in the domain name; and

(c) The domain name was registered and is being used fraudulently.

The first limb of the UDRP requires a Panel to address two main issues: (i) whether the complainant has sufficiently proven relevant trade mark rights and (ii) whether the disputed domain name is found to be confusingly similar to such trade mark rights on a straightforward visual and aural comparison, a much narrower test than the “likelihood of confusion” test under trade mark law. Questions about the extent of trade mark rights and the physical location of the respective parties are irrelevant (but may be addressed further under the other limbs, if applicable).

Concerning (i), the Panel determined that the Complainant possessed long-standing trade mark rights in FUTURE INN, and that such rights should not be declared invalid simply because the Respondent had commenced cancellation proceedings. Concerning (ii), the Panel determined that there was confusing resemblance between the Complainant’s FUTURE INNS trade mark and the contested domain name, thefuturehotels.com, notwithstanding the Respondent’s successful registration of its FUTURE HOTELS trade mark implying that there was no confusing likeness. However, the Panel emphasized the narrower criteria under the UDRP and determined that the Domain Name did have the dominating element “future” that separated the Complainant’s hotel services, and agreed that the words “inns” and “hotels” had a significant degree of conceptual overlap. The Panel further cited the content of the Respondent’s website, which provides hotel-related services, as an additional element contributing to the risk of misunderstanding. As a result, the first limb was gratified.

Concerning the second leg, the Complainant argued that the Respondent was not authorized to use its trademarks and that the Domain Name did not stem from the Respondent’s own name. As a result, the Respondent’s use of the Domain Name to market his hotels could not be deemed genuine noncommercial or fair use under the Policy. The Respondent basically claimed that the Domain Name was generated from the names of his firms and was registered in preparation of his business development in the United Kingdom. The Respondent further claimed that while registering the Domain Name in 2019, he was unaware of the Complainant and its company.

The Panel first examined the question of the Respondent’s previous knowledge of the Complainant’s trade marks at the time of Domain Name registration. On the one hand, since the two businesses seemed to be in the same or closely similar sectors, it was reasonable to assume that the Respondent was aware of the Complainant and its company when registering the Domain Name. However, given the geographical distance between the two parties’ bases (the UK and Greece), the possibility that the Respondent had never heard of the Complainant at least before it sought to expand its business in the UK could not be completely ruled out.

In light of this quandary, the Panel determined that the Respondent’s holding of a registered UK trade mark for FUTURE HOTELS was a significant element in this instance. The Panel emphasized that, notwithstanding the Complainant’s earlier trade marks in FUTURE INN, this trade mark had been validly registered in the UK and was valid awaiting the result of the Complainant’s cancellation action. As a result, the Panel determined that the owner of the trade mark, Future Hotels Limited, had a prima facie right to use this phrase. As a result, the Respondent, who owned Future Hotels Limited, could use that right and utilize the Domain Name to advertise his hotel company.

Given the above, the Panel determined that the second limb had not been met, and hence there was no need to examine the third limb. As a result, the Complaint was dismissed.

As this is beyond the scope of the UDRP, UDRP Panels will not normally assess the validity of existing trade mark rights. Brand owners interested in concurrent trade mark procedures would be wise to wait until the outcome of those proceedings before filing a UDRP complaint.


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