In the recent WIPO Domain Complaint of ALTILINK Real Estate Hungary KFT v. Domain Administrator, SK Creations, Inc., the Complainant (ALTILINK) was unsuccessful in proving the Respondent (SK Creations, Inc) had acted in bad faith in purchasing the disputed domain name <nestra.com> (the Domain Name). This case highlights the importance of appropriately evidencing that a domain name has been bought and is being used in bad faith and the importance of keeping on top of domain name renewals!
Background
The Complainant operates from the domain <nestra.fr> and used the Domain Name <nestra.com> as its primary website offering property management services. It acquired the Domain Name in 2018 and annually renewed the registration until 2023, when it forgot to complete the annual renewal.
The Respondent, SK Creations, Inc., is in the business of investing in domain names. In August 2023, the Respondent bought the Domain Name in an auction and later put the Domain Name back up for sale. At the time of filing the Complaint, the Domain Name directed to a webpage informing viewers that the Domain Name was available for purchase.
The Complaint
In order to be successful in a Domain Complaint the following three elements must be proven:
1. The domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in the Domain Name; and
3. The Domain has been registered and is being used in bad faith.
In the case at hand, the Complainant provided that it held registered protection for the mark NESTRA in Hungary under registration no. M1800994. As the disputed Domain Name contains the identical sign ‘NESTRA’, the first element was met.
In regards to the second element, the Respondent did not have any trademark rights, whether registered or acquired, in the sign ‘NESTRA’. The Respondent did not use the Domain Name but was offering it for sale, which the Respondent argued constituted a legitimate interest in the Domain Name. The Panel noted that purchasing a domain name for the purpose of selling it, may be done in good or bad faith, and as such it is necessary to examine the third element to answer the second element.
In regards to the third element, the Complainant claimed that the Domain Name was being sold for a price “much higher than the market price” owing to the Respondent’s knowledge of the Complainant, constituting bad faith. The Complainant further argued that the fact the Respondent holds more than 14,000 domain names is itself an indicator that it was acting in bad faith in purchasing the disputed Domain Name.
In response, the Respondent stated that it was not aware of the Complainant when purchasing the Domain Name and that the Complainant’s mark was not well-known outside of Hungary. Further, the Respondent argued that the Complainant’s trade mark was not inherently distinctive but means “window” in Italian and “nest” in Hungarian; factors which made the Domain Name valuable and explained the higher sale price.
In considering whether the Domain Name was registered and used in bad faith, the panel noted that traders buying domain names in bulk may have an extra obligation to avoid trademark-abusive domain names. In this case, the Respondent claimed that it had conducted relevant good faith searches and as such the Panel believed that the Respondent had not procured the Domain Name with “wilful blindness”. The act of purchasing a domain name for resale does not itself constitute an act of bad faith. Overall, the Panel believed that it was unlikely the Respondent was aware of the Complainant at the time of purchasing the Domain Name and the Respondent was found not to have acted in bad faith. The Complaint was resultantly denied.
Takeaways
Before filing a domain complaint, or at least at the point at which you become aware of the identity of the Registrant, it is important to conduct full investigations into them and to remember that being in the business of buying domain names is not in itself a bad faith activity. If the Respondent appears to be in this business, providing evidence that the Respondent has a history of purchasing domain names in bad faith or that the Respondent was “wilfully blind” (i.e. did not conduct necessary searches) in purchasing the domain name can also aid in supporting the third element of bad faith.
This case further highlights the importance of keeping on top of your domain name renewals. Simply having national trade mark rights in the domain name does not automatically mean that you will be successful in a domain complaint. This is particularly true if the domain name is descriptive, as it can increase the value of the domain name to third parties and provide the respondent with an argument as to its good faith intentions in purchasing and using the domain name.
