Thu 8. Aug 2024, 21:29
The owner of the trade mark "ABNORMAL", a security company, failed in the dispute over the domain abnormal.ai. The three-member panel at The Forum unusually included the ending .ai as a decision criterion.
The US security company "Abnormal Security Corporation" sees its rights infringed by the domain abnormal.ai and started UDRP proceedings before The Forum. It accuses its opponent, the domain investor Narendra Ghimire, that the domain looks confusingly similar to its trademarks "ABNORMAL" and "ABNORMAL SECURITY", that it is not known under the domain, that it registered it in order to participate in the trademarks without authorisation and that it is not using the domain properly. The opponent counters that "abnormal" is a general dictionary term and that the complainant is not the original owner of the expired registration of the domain. At the time when he legally purchased the domain at auction, the complainant was not known to him. The case was decided by a three-judge panel consisting of David S. Safran, a US lawyer with a doctorate in law and an additional degree in mechanical engineering, as chairman, Australian lawyer The Hon Neil Anthony Brown KC and American lawyer Michael A. Albert as assessors.
The three decision-makers came to the conclusion that the claim that a third party had lost the domain because the registration had expired remained unchallenged. They also found that the term "abnormal" was a generic term, that the respondent had no knowledge of the complainant at the time the domain was registered, that the complainant had not proved that "abnormal" or "abnormal.ai" had become a distinctive sign of the domain and that the auction of a generic domain was not in itself proof of bad faith. This led to the complaint being dismissed without further ado (Forum Claim Number: FA2405002099733). But that alone did not concern the decision-makers. They deviated from the usual examination as early as the first question, the similarity or identity of trade marks and domains. At this point, the ending of a domain takes a back seat because it is a technical indication. But this time there were good reasons not to ignore the top level domain, because .ai has a meaning and ignoring it would be unrealistic. The extension not only stands for Anguilla, but is also marketed as an abbreviation for AI ("artificial intelligence"). It is quite clear that domains registered under .ai are often associated with activities related to artificial intelligence. This is also the case here. Internet users would perceive the domain in connection with "artificial intelligence" and not with the complainant's security business. In view of this, the Panel could not find any similarity with the trade mark "ABNORMAL SECURITY", only with the trade mark "ABNORMAL", which was sufficient at that point. However, because "abnormal" is a general generic term and the opponent acquired the domain as a domain investor at an auction, the Panel considered the opponent to be the authorised domain holder. The decision-makers were also unable to establish bad faith in the registration and use of the domain. After the complainant was unable to fulfil two elements of the UDRP, the panel also examined the question of reverse domain name hijacking (RDNH). However, it did not find that this was the case: the complainant's argumentation was weak, but it could not be ruled out that he could win. The panel dismissed the complaint and ruled that the domain abnormal.ai would remain with the owner.
It is pleasing that the Panel included the additional significance of the .ai ending in its assessment of the case. It is a tradition for panels to take a ccTLD into account, for example in the dispute over b.mw, ap.pl and tes.co. In these cases, it was not about the additional meaning of the ending, but its function as a trademark element. We will continue to keep an eye on UDRP decisions concerning .ai domains and monitor developments. Our statistics for UDRP proceedings for .ai domains currently show a significant increase at The Forum: With 18 proceedings for 2024, there are already more than the 13 proceedings filed in 2023. For WIPO, we have noted 60 proceedings so far this year, 12 of which have not yet been decided, while there were a total of 53 proceedings in 2023. This means that there are already more cases at WIPO at the beginning of August 2024 than in the whole of 2023. The trend for .ai is therefore rising, both in terms of registrations, as reported in July, and in terms of UDRP proceedings. However, the number of complaints rejected by both accredited dispute resolution bodies is low: so far, there have been two each in 2024.
The UDRP decision on the domain abnormal.ai can be found at:
https://www.adrforum.com/DomainDecisions/2099733.htm