Thu 5. Sep 2024, 08:39
The Swedish complainant was successful in a recent domain dispute, even though its trade mark rights only came into existence after the opponent registered the domain gigapay.com.
The complainant is the Swedish company Gigapay Sweden AB, which was founded on 3 December 2018 and offers payment services in 80 countries. In November 2018, it registered the Swedish domain gigapay.se and in August 2019 gigapay.co. In August 2019, the complainant's parent company applied for ‘GIGAPAY’ as an EU trade mark and as a trade mark in the UK. The complainant considers its trade mark rights to be infringed by the domain gigapay.com, which is why it initiated UDRP proceedings before the WIPO in May 2024. Among other things, it claims to have negotiated the purchase with the former owner of the domain gigapay.com in December 2018 and early January 2019. He seemed willing to sell the domain for less than US$ 10,000. At the end of October 2019, she learnt from a broker that the domain had been sold to the opponent (JUNGYUHKOOK). The complainant made purchase offers to JUNGYUHKOOK in 2023 and 2024. The latter demanded US$ 180,000 for the domain. He did not use the domain, the complainant continued, and he was also not known under the name ‘Gigapay’. JUNGYUHKOOK had already been involved in numerous UDRP proceedings in which he had regularly lost due to a pattern of bad faith behaviour. The opponent Gigapay, which is identical to JUNGYUHKOOK, argued, among other things, that the complainant had not proven bad faith because it had already registered the domain gigapay.com on 16 January 2019, well before the complainant's trade marks were applied for. Kathryn Lee, a US lawyer based in South Korea, was appointed as the decision-maker.
Lee upheld the complaint, as there was more to suggest that the opponent had registered and used the domain in bad faith (WIPO Case No. D2024-2028). Lee specified English as the language of the proceedings, as other proceedings against JUNGYUHKOOK had already been conducted in English. It was clear that the domain and trade mark were identical. Lee did not explicitly examine the question of a right or legitimate interest of the opponent, but referred to the statements on the bad faith of the opponent, which showed that there were no rights in favour of the opponent. Normally, there would be no bad faith if the domain was registered before the complainant obtained his trade mark rights. However, there are exceptions. In this case, the opponent registered the domain after the complainant registered and used social media accounts on Twitter, Instagram and Snapchat under the name ‘Gigapay’ in November 2018 and launched a marketing campaign on Instagram in the same month. It was likely that the opponent, who claimed to be a domain name company, discovered this newly formed company and registered the domain gigapay.com to capitalise on its association with the complainant, or more likely in the hope of selling it to the complainant.
Lee went on to say that it appeared that the opponent had acquired the domain directly from the previous owner and not from a registry of unregistered or expired domains. This strongly suggests that, knowing about the complainant, he deliberately purchased the domain and thus targeted it. Furthermore, the rule according to which an unused domain does not constitute use in bad faith does not apply here. The opponent had not presented any evidence of an intended bona fide use of the domain, let alone substantiated it. Under these circumstances, the passive holding of the domain does not preclude a finding of bad faith. Lee upheld the complaint and decided to transfer the domain gigapay.com to the complainant.
The UDRP decision on the domain gigapay.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-2028.pdf