Recently, a panel of the World Intellectual Property Organization (WIPO) denied a Complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the disputed Domain Name visasdept.com, finding that the Complainant had not demonstrated that the Domain Name was identical or confusingly similar.
VFS Global Services PLC, a British company, filed and processed visa applications since 2001 in many countries worldwide. In India, New Zealand, Mexico, and the United States, the Complainant held several trade marks for VFS or VFS GLOBAL.
In accordance with the underlying WhoIs information, the Respondent was based in the US.
Although no website was located under this Domain Name, the Respondent had created an email address with it, “[email protected]”, which allowed him to send emails.
In response to a complaint submitted by the Complainant, a person using the email address of the Respondent requested information on visas in Canada and was directed to a website where INR 15,500 was required to pay. In this website, a payment was presented as being made to one of the Complainant’s group companies. According to the Complainant, this website was not its own and was not authorised to accept payments. No response was filed by the Respondent.
A complainant must satisfy the following requirements of paragraph 4(a) of the UDRP on the balance of probabilities to prevail:
(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The first limb of the complaint requires the complainant to demonstrate its trademark ownership rights and, secondly, show that the domain name in dispute is identical or confusingly similar to the trade mark.
As a result of the Panel’s findings, the Complainant proved ownership of multiple trade marks in both VFS and VFS GLOBAL. The Complainant asserted, however, that the Respondent’s email address, “[email protected]”, caused confusion and made it appear that the Domain Name was related to it. According to the Complainant, the Respondent created a fake email address using the Domain Name.
While the Panel acknowledged that the email address could create confusion with the Complainant’s trade marks, it stressed that the UDRP was meant to prevent abusive domain name registrations, not email addresses. To establish the first requirement under the UDRP, the Domain Name visasdept.com had to be identical to or at the very least confusingly similar to the Complainant’s trademarks, VFS or VFS GLOBAL. In addition, the Panel found that “visasdept” did not sufficiently resemble the Complainant’s trademarks, disregarding the “.com” gTLD.
The Panel emphasized that the UDRP addressed disputes relating to abusive domain names, therefore it concluded that the Complainant did not establish that the disputed Domain Name was confusingly similar to its trade marks.
It was with great hesitation that the Panel denied the transfer of the disputed Domain Name to the Complainant as it had failed to demonstrate that it met the first requirement under the UDRP.
As this case illustrates, the UDRP can only be used to resolve disputes concerning abusive domain names, not email addresses in general. It may be persuasive to prove a respondent is targeting the trade marks of the complainant with an email address created for fraudulent purposes, but in order to obtain a transfer order under the UDRP, the disputed domain name must be identical or confusingly similar to such trademarks.
In cases like this, where a confusing email address has been used for malicious activities, but the domain name used to create it does not have a confusing similarity to their trademark, brand owners can consider contacting the appropriate domain name registrar, attaching conclusive evidence to support their claim. It may be appropriate for registrars to suspend the domain name at issue under certain circumstances, such as when they are presented with evidence of clear fraudulent behavior.