European Union Intellectual Property Office (EUIPO) tries reverse domain name hijacking

Intellectual property agency filed a surprisingly deficient cybersquatting claim.

European Union Intellectual Property Office (EUIPO), the agency responsible for managing registration of EU-wide trademarks, has been found to have tried reverse domain name hijacking.

The organization filed a cybersquatting complaint against the domain name epta-agencies .com under the Uniform Domain Name Dispute Resolution Policy (UDRP).

EUIPO has a good reason for wanting this domain name taken down. According to the complaint, the domain is connected to an operation sending misleading invoices to trademark registrants. While the invoices have a disclaimer about what they are for, many people who receive notices like this think they must pay.

While this might be nefarious, it’s not cybersquatting, so filing a UDRP case was inappropriate.

The agency relied on trademarks for EUIPO and European Union Intellectual Property Office for its case. There are two problems with this.

First, the registered marks it relied on were registered after the domain was registered. Therefore, the agency needed to rely on common law rights for these terms but didn’t provide any evidence of these rights predating the domain registration.

Second, even if it did show rights, there is no similarity between the marks and the domain.

Czech Arbitration Court panelist Neil Brown noted that this case was flawed from the beginning and was brought in bad faith in an attempt at reverse domain name hijacking.

He wrote:

…the Complainant must have realised that its chances of succeeding on the case it presented and the evidence it used to prove that case were slim and probably non-existent. It must have and should have realised that when the disputed domain name was registered on September 10, 2022 it, the Complainant, did not have any registered trademarks. It must also and should have realised that if it was to have any hope of proving bad faith registration of the domain name, it would have to establish a common law or unregistered trademark that pre-dates the registration of the disputed domain name. It asserted that it did have such rights but asserted only that it had them at the present time, i.e. at the time the Complainant was filed and not at any time prior to the disputed domain name being registered. Nor did it offer any evidence that it had such common law or unregistered trademark rights at any time.

When it came to whether the disputed domain name was identical or confusingly similar to the registered trademark, it must have and should have realised that it would be next to impossible to show that this was so. It opted for the submission that the disputed domain name was confusingly similar to the trademarks, but a simple comparison between the two should have told it that it could not that sustain that submission. The Panel never had it explained how the words ”epta” and “agencies” in the domain name were similar or confusingly similar to the words “EUIPO” or “EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE” in the trademarks when they clearly are not and are not included in the trademarks.

Even more significantly, the Complainant must have and should have realised that when it came to bad faith registration of the disputed domain name, it could not succeed because its only proven trademarks were applied for and registered well after the registration of the disputed domain name and the domain name could not have been registered in bad faith.

The Complainant therefore should not have filed this proceeding, knowing of these substantial defects in its case and yet it went ahead.

Schönherr Rechtsanwälte GmbH represented EUIPO and the domain owner didn’t respond.