< Back to all publications

UDRP domain name complaints based on Bad faith- Good outcomes!

The World Intellectual Property Organization (WIPO) recently issued an interesting decision in a Uniform Dispute Resolution Policy (UDRP) proceeding, in Philip Morris Products S.A. v. Konstantin Danilidi Case No. D2024-0008. Philip Morris Products S.A. (the “Complainant”) contended that the disputed domain name <heetflavrs.com> was registered and is being used in bad faith by Konstantin Danilidi (the “Respondent”), who was aware of the Complainant’s HEETS trademark. By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent attempted to suggest to users visiting the disputed domain name/website that the Complainant (or an affiliated dealer of the Complainant) is the source of the website, which it is not. This suggestion was further supported by the Respondent’s use of the Complainant’s official product images, as well as the third party online shop to which users / relevant consumers are redirected to from the website (namely, “www.smokeus.org”) using the Complainant’s registered HEETS trademarks, both accompanied by a copyright notice claiming the copyright for the Website and its content. The Respondent did not reply to the Complainant’s contentions. Eventually, the Panel found the Respondent’s registration and use of the disputed domain name were done in bad faith as per the principles enunciated under the UDRP.

Likewise, in another interesting case under the UDRP, i.e., PEGASE v. Client Care, Web Commerce Communications Limited Case No. D2024-0013, PEGASE (the “Complainant”) was a company based in France which was founded in 1981 and has more than 800 boutiques and 6400 employees. The Complainant holds the domain name since 1997 which resolves to its official website, and which has 15.5 million visitors per year as on date. The disputed domain <lahalleauxvetement.com> was registered on December 19, 2023. Based on the evidence adduced by the Complaint, the disputed domain name resolves to a mirror website of the company CAROLL INTERNATIONAL, which is a subsidiary of the Complainant. The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of, both, the Complainant and its well-known trademarks LA HALLE and LA HALLE AUX VETEMENTS at the time it registered the disputed domain name. Furthermore, the “About us” section of the Respondent’s website also refers to Grain de Malice, a competitor of the Complainant. The UDRP Panel held that the use of a domain name for illegal activities, such as in the instant case, to impersonate the Complainant’s affiliate by mirroring the content of its website, constitutes use in bad faith.